DECISION

of the First Board of Appeal

of 15 March 2021

In case R 1123/2018-1

STAR GOLD GmbH

Ebereschenweg 3

75180 Pforzheim

Germany

Applicant / Appellant

represented by PFIZ/GAUSS PATENTANWÄLTE PARTMBB, Tübinger Str. 26, 70178 Stuttgart, Germany

Joules Limited

16 The Point, Rockingham Road

Market Harborough, Leicestershire LE16 7QU

United Kingdom

Opponent / Defendant

represented by KELTIE LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 810 755 (European Union trade mark application No 15 719 305)

The First Board of Appeal

composed of G. Humphreys (Chairperson), Ph. von Kapff (Rapporteur) and A. Kralik (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts.

By an application filed on 3 August 2016, STAR GOLD GmbH (‘the applicant’) sought to register the figurative mark.

for the following list of goods as limited on 6 April 2017:

Class 14 – Jewellery; Chronoscopes, Cases for watches and clocks.

The application was published on 29 August 2016.
On 29 November 2016, Joules Limited (‘the opponent’) filed and opposition against the registration of the published trade mark application for all the above goods. The grounds of opposition were those laid down in Article 8(1)(b) and Article 8(5) EUTMR.
The opposition was based on several earlier rights.

Earlier rights

A. Word mark

JOULES

registered in the United Kingdom under No 2 526 463, filed on 17 September 2009 and registered on 19 March 2010 for, inter alia, the following goods:

Class 14 – Precious metals and their alloys and goods in precious metals or coated therewith; precious and semi-precious stones; chorological and chronometric instruments; watches and clocks; jewellery; cufflinks, tie pins, key rings, trinkets.

Reputation in the United Kingdom was claimed for all the goods.

B. Word mark

JOULES

registered in the United Kingdom under No 2 379 939 filed on 8 December 2004 and registered on 18 November 2005, for the following goods and services:

Class 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes; hat boxes of leather or imitation leather; belts; trunks and travelbags; umbrellas, parasols and walking sticks; bags; backpacks; briefcases; game bags; garment bags; handbags; key cases; purses; rucksacks; school bags; walking stick seats; walking sticks;

Class 25 – Clothing, footwear and headgear; hats and hat frames; caps; outerclothing and overcoats; swimwear; underwear;

Class 35 – The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing, footwear, headgear and accessories store; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a clothing, footwear, headgear and accessories catalogue by mail order or by means of telecommunications.

Reputation in the United Kingdom was claimed for all the goods and services.

C. Word mark

JOULES

international registration No 876 494 designating the European Union, filed and registered on 6 December 2005, for the following goods and services:

Class 25 – Clothing, footwear and headgear; hats and hat frames; caps; outerclothing and overcoats; swimwear; underwear;

Reputation in the European Union was claimed for all the goods and services.

D. Figurative mark

registered as European Union trade mark No 14 902 787 filed on 14 December 2015 and registered on 24 June 2016 for, inter alia, the following goods and services:

Class 14 – Precious metals and their alloys and goods in precious metals or coated therewith; precious and semi precious stones; horological and chronometric instruments; watches and clocks; jewellery; cufflinks, tie pins, key rings, trinkets;

Class 18 – Leather and imitations of leather; belts; trunks and travelbags; umbrellas; bags; backpacks; briefcases; game bags; garment bags; handbags; key cases; purses; rucksacks; school bags; wash bags; sports bags;

Class 25 – Clothing, footwear and headgear; hats and hat frames; caps; outerclothing and overcoats; swimwear; underwear; gardening aprons;

Class 35 – Retail services, including online retail services connected with the sale of clothing, footwear, headgear and fashion accessories including bags, umbrellas, belts, key cases, handbags; retail services, including online retail services connected with the sale of scarves, wallets, purses, sunglasses, jewellery, watches, hosiery, cosmetics and toiletries; department store retail services connected with the sale of clothing, footwear, headgear and fashion accessories including bags, umbrellas, belts, key cases, handbags; department store retail services connected with the sale of scarves, wallets, purses, sunglasses, jewellery, watches, hosiery, cosmetics and toiletries; sales promotion for others; procurement services for others (purchasing goods and services for other businesses).

Reputation in the European Union claimed for all the goods and the following services:

Class 25 – Clothing, footwear and headgear; hats and hat frames; caps; outerclothing and overcoats; swimwear; underwear; gardening aprons;

In order to support reputation of its earlier trade marks, on 6 April 2017 the opponent filed the following evidence, in particular:

Witness statement of the Chief Executive Officer of Joules Limited in which he declares that the trade mark ‘JOULES’ was used in the UK in relation to various articles of jewellery;
Printout from Drappers online magazine from 11 December 2008 which in a nutshell explains the origin of the ‘JOULES’ brand, which was started up in 1979 in the United Kingdom by Ian Joule. Its main work products were from waxed jackets, waterproofs and wellies to bright and breezy womenswear, and children's clothes;
Articles about the Joules Group, its own website, and from Drapers magazine, based in England, with the title ‘Joules takes home mainstream brand of the year at industry awards’, (17 November 2016); Article from Drapers magazine ‘Drapers Awards 2016 Mainstream Brand of the Year’ (18 November 2016);
List of 100 JOULES own ‘brand’ shops in the UK;
Full list of UK and European stockists;
Extracts of its own websites www.joules.com and www.tomjoule.de [sic];
Selection of catalogues particularly focused on the UK and a selection of recent marketing materials directed at customers in the UK and EU;
List of trade shows and exhibitions that ‘Joules’ regularly attends, including the British Equestrian Trade Association or Pure Moda;
Press articles, that indicate the growth of the opponent from the years 2011 to 2016, showing that the opponent is now one of the largest clothing brands in the UK;
Newspaper articles showing the ‘Joules’ brand having a joint sponsorship agreement with a hotel and being one of the sponsors of the Festival of British Eventing, which take place in England;
List of the annualised visitors it has had to its three websites from visitors from different countries;
List of awards won by both the ‘Joules’ brand and the current company director Tom Joule, the most recent being the Drapers Awards, whose territorial scope is limited to the UK and Ireland.

By decision of 16 April 2018 (the ‘contested decision’) the Opposition Division refused the trade mark applied for all the contested goods on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:

Earlier United Kingdom trade mark registration No 2 526 463 ‘JOULES’

Similarity of the goods

‘Jewellery’ is identically protected by both marks. The contested ‘chronoscopes’ are included in the broader category of the opponent’s ‘chorological and chronometric instruments’. Therefore, they are identical.
The contested ‘cases for watches’ and ‘clocks’ are similar to the earlier ‘chorological and chronometric instruments’ because they are complementary. They can be produced by the same jewellery manufacturers and have the same distribution channels, that is, jewellery shops and jewellery sections in large department stores. Furthermore, they target the same consumers.

Relevant public

The goods found to be identical or similar are directed at the public at large. Their degree of attention is considered to be average for some of the goods, such as, cases for watches and clocks, and relatively high for other goods, such as jewellery and chronoscopes, since these goods are often expensive and are not frequently purchased.
The relevant territory is the United Kingdom.

Similarity of the signs

The element ‘JOULES’ of the earlier mark will be associated by the relevant public with a male name, which is not particularly common. This element is distinctive to an average degree in relation to the relevant goods.
The contested mark is figurative and is composed of the verbal elements ‘JULES’ and ‘GENTS’ depicted in standard upper-case lettering and between them, a figurative element representing a slightly stylised heart, which could also be perceived as a stylised version of an ampersand ‘&’. As the applicant states, ‘JULES’ is the abbreviation for the female name ‘Julie’, but it also will be associated with a male name, namely a different version of the male name ‘Joules’. ‘GENTS’ will be perceived as the abbreviation for ‘gentlemen’, which means ‘polite men who behave well towards other people, especially women’. All the elements are distinctive to an average degree for the relevant goods.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.
Visually, the signs coincide in the sequence of letters ‘J*ULES’ which appear in the only element of the earlier mark and at the beginning of the contested sign. However, they differ in the second letter ‘O’ of the earlier mark and the additional elements of the contested mark, as described above. The stylisation of the contested mark is rather basic and does not add further differences. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‘J(O)ULES’, present identically in the signs. The pronunciation of the only word of the earlier mark and the first element of the contested mark is identical, irrespective of the presence of the second letter ‘O’ in the earlier mark, which does not imply an additional sound. The pronunciation differs in the syllable ‘GENTS’ of the contested mark, and eventually in the symbol ‘&’ if perceived as such, which have no counterparts in the earlier sign. Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be perceived as referring to different versions of the same male name ‘JOULES/JULES’, at least by part of the public, whereas the contested sign also contains additional meanings (gentlemen and the heart). Therefore, the signs are conceptually similar to an average degree.
The earlier mark has been extensively used and enjoys an enhanced scope of protection, however, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark were to enjoy an enhanced degree of distinctiveness.

Other earlier signs

As earlier United Kingdom trade mark registration, No 2 526 463 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent.

On 15 June 2018, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 16 August 2018.
In its response received on 16 October 2018 the opponent requested that the appeal be dismissed.
Both parties had an extensive exchange of views on the impact of Brexit on the present procedure, following an initial request by the applicant to suspend the proceedings because of Brexit. In the course of the exchange of observations, the opponent argued, inter alia, on why the opposition should also be upheld on the basis of the other earlier trade marks.

Submissions and arguments of the parties

The arguments raised in the statement of grounds may be summarised as follows:

The Opposition Division’s decision has neglected to carry out the overall impression of the contested mark and the attention of the consumer.
Although ‘jewellery’ and ‘chronoscopes’ are directed at the public at large, these goods are not simple consumables, but rather are luxury goods which are often expensive and not frequently purchased, thus receiving an extraordinarily high degree of attention. This fact was mentioned by the Opposition Division but was not duly taken into consideration.
The distinctiveness of the opponent’s mark must be seen to be less than normal, since it consists of the surname of the founder, Tom Joule.
The unique design and the central position of the heart-shaped ampersand representing the conjunction ‘and’ prevails over general principles. Moreover, the contested mark contains two words, whereas the earlier mark comprises only one.
Conceptually the word ‘Joules’ will be perceived as a male first name, while ‘Jules’ will be regarded as a female name (deriving from Julie) contrasting with ‘Gents’. The heart-shaped connector will also trigger emotional associations as regards the contested mark, which are absent in the earlier mark. Therefore, the signs are not similar in any of the relevant factors.

The arguments raised in response may be summarised as follows:

Contrary to the applicant’s arguments not all items of jewellery or chronoscopes are expensive. Accordingly, the average consumer of jewellery can also exhibit an average degree of attention.
As further evidence of this, it is noted that the applicant’s own jewellery goods retail on its website at www.julesandgents.com for as little as EUR 24.37 and for up to EUR 83.19 which is in clear contradiction to its submission that such goods are expensive.
Contrary to the applicant’s statement, the Opposition Division did not find it necessary to review the evidence submitted on enhanced distinctiveness.
The Opposition Division was correct in finding that there was an average to high degree of similarity between the marks when considering the various aspects of comparison.
In the fashion and fashion accessory industries it is common for a mark to be configured in different ways according to the type of product which it designates. For instance, the mark owner may use sub-brands in order to distinguish various product lines. In such circumstances conflicting marks can belong to two distinct ranges of products, but still come from the same manufacturer.
In the present case, the consumer would simply assume that the applicant’s goods are the male (gent’s or gentleman’s) range of goods produced by the opponent.

Reasons

All references made in this decision should be seen as references to the EUTMR (EU) Nº2017/1001 (OJº2017 Lº154, p.1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.
The appeal complies with Articles 66 and 67 and Article 68(1) EUTMR. It is therefore, admissible.
The appeal is well founded. The opposition is rejected.

Earlier United Kingdom trade mark registration No 2 526 463

At the date of this decision the earlier UK trade marks on which the Opposition Division based its decision are no longer valid and enforceable in the EU. As of 1 February 2020, the United Kingdom withdrew from the European Union pursuant to Article 50 of the EU Treaty. The withdrawal had effect on 31 December 2020, after which Union law stopped being applicable to, and in, the United Kingdom. That includes the EUTMR and its provisions regarding the protection of earlier rights (Article 8 EUTMR) and opposition proceedings (Articles 46 and 47 EUTMR).
It follows from Article 71(1) EUTMR that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (13/03/2007, C‑29/05 P, ARCOL / CAPOL, EU:C:2007:162). The relevant point in time is the date of the present decision. An earlier right must not only be valid and in force on the date on which the opposition is filed, but it must still be valid and in force on the date the decision is taken.
There is no public interest in conferring the benefit of the full protection envisaged by the EUTMR on a trade mark which no longer fulfils its essential function within the relevant territory. The essential purpose of Articles 8 and 46 EUTMR, concerning relative grounds for refusal and opposition proceedings, is to ensure that, by making it possible to refuse the registration of a new mark which may conflict with an earlier mark as there is a likelihood of confusion between them, the earlier mark may retain its function of identifying origin. Concerning the territorial scope of those provisions, both those marks must coexist within the same territory. 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 ceased for the coinciding territory. If there is no territory in which both marks coexist, no conflict can arise. It is contrary to the spirit and the logic underlying the provisions governing the assessment of relative grounds for refusal and opposition proceedings, if the application was to be dismissed. The Boards of Appeal must take account of changes in circumstances that occur between the filing of the opposition and the decision on the opposition (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 30-34; 14/02/2019, T‑162/18, ALTUS (fig.) / ALTOS et al., EU:T:2019:87 § 34).

Other earlier trade marks

In addition to the earlier trade mark, the opponent enjoys protection for other earlier EUTM.

Obligation to examine further marks

As the opposition was granted on the basis of a likelihood of confusion in the application of the UK mark, on which the opponent may no longer rely, the opposition procedure needs to continue with the examination of the further grounds invoked in accordance with Article 46(1)(a) EUTMR, namely Article 8(1)(b) EUTMR and Article 8(5) EUTMR based on the earlier EUTMs.

Competency of the Boards of Appeal – legal provisions

The question is whether the Board is competent to decide on those other earlier rights for the first time or whether it is obliged to remit the case to the first instance for a first examination.
The relevant legal provisions of the EUTMR are as follows:

Recital 30

(30) It is necessary to ensure that parties who are affected by decisions made by the Office are protected by the law in a manner which is suited to the special character of trade mark law. To that end, provision should be made for an appeal to lie from decisions of the various decision-making instances of the Office. A Board of Appeal of the Office should decide on the appeal. Decisions of the Boards of Appeal should, in turn, be amenable to actions before the General Court, which has jurisdiction to annul or to alter the contested decision.

Article 67 - Persons entitled to appeal and to be parties to appeal proceedings

Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.

Article 68 - Time limit and form of appeal

1. …Within four months of the date of notification of the decision, a written statement setting out the grounds of appeal shall be filed.

2. In inter partes proceedings, the defendant may, in his response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. Such submissions shall cease to have effect should the appellant discontinue the proceedings.

Article 70 - Examination of appeals

1. If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable.

2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.

Article 71 - Decisions in respect of appeals

1. Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

2. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

…

Article 94 - Decisions and communications of the Office

1. Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

…

Article 95 - Examination of the facts by the Office of its own motion

1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

In invalidity proceedings pursuant to Article 68, the Office shall limit its examination to the grounds and arguments submitted by the parties.

2. The Office may disregardfacts or evidence which are not submitted in due time by the parties concerned.

Relevant provisions of the EUTMDR and its preparative documents read as follows:

EXPLANATORY MEMORANDUM COMMISSION DELEGATED REGULATION (EU) of 18.5.2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96^¹

3.3. Appeals and organisation of the Boards of Appeal (Articles 21 to 48)

… The present text builds upon the current implementing regulations, the relevant case law of the Court of Justice, and the best practice developed by the Boards of Appeal over the past decade. It specifies the provisions of the EU Trade Mark Regulation. It improves the transparency, legal certainty and efficiency of appeal proceedings, and user-friendliness, in the following respects:

… Other provisions clarify the procedure for allocating an appeal case, the content of the appellant’s statement of grounds and of the defendant’s response, and the scope of examination of an appeal.

Recital (9) EUTMDR

(9) In order to allow for an effective, efficient and, within the scope of the appeal defined by the parties, complete review of decisions taken by the Office in the first instance by means of a transparent, thorough, fair and impartial appeal procedure suited to the specific nature of intellectual property law and taking into account the principles laid down in Regulation (EU) 2017/1001, it is appropriate to reinforce legal certainty and predictability by clarifying and specifying the procedural rules and the parties' procedural guarantees, in particular where a defendant makes use of the right to file a cross appeal.

Article 1 - Subject-matter

This Regulation lays down rules specifying: …

(d) the formal content of a notice of appeal and the procedure for the filing and the examination of an appeal, the formal content and form of the Boards of Appeal's decisions and the reimbursement of the appeal fee, the details concerning the organisation of the Boards of Appeal, and the conditions under which decisions on appeals are to be taken by a single member.

Article 21 – Notice of Appeal

A statement setting out the grounds of appeal filed pursuant to the fourth sentence of Article 68 EUTMR shall contain a clear and unambiguous identification of the following:

…

(b) the grounds of appeal on which the annulment of the contested decision is requested within the extent identified in accordance with Article 21(1)(e) of this Regulation.

…

Article 27(2) EUTMDR - Examination of the Appeal

…

2. In inter partes proceedings, the examination of the appeal and, as the case may be, the cross appeal, shall be restricted to the grounds invoked in the statement of grounds and, as the case may be, in the cross appeal. Matters of law not raised by the parties shall be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation (EU) 2017/1001 having regard to the facts, evidence and arguments presented by the parties.

Ambiguity in the wording of Article 27(2) EUTMDR

As to the wording of Article 27(2) EUTMDR, the ‘examination of the appeal’, or as the case may be the cross- appeal, shall be restricted in inter partes proceedings to ‘the grounds invoked in the statement of grounds’ , as the case may be, in the cross-appeal. ‘Matters of law’ not raised by the parties shall be examined by the Board of Appeal only where they concern ‘essential procedural requirements’ or where it is necessary to resolve them in order to ‘ensure a correct application of EUTMR having regard to the facts, evidence and arguments presented by the parties’.
The wording is ambiguous as to the meaning of the ‘examination of the appeal’ and ‘restricted to the grounds invoked in the statements of grounds’. There are different ways of reading the provision.
According to the first way of reading this, those words regulate the distribution of competencies between the Boards of Appeal and the Opposition Division as first instance. It may restrict the examination and prohibit a decision regarding the entire case, excluding the grounds of the opposition that have not yet been examined by the Opposition Division. Only to the extent that the appellant or the defendant in a cross-appeal were to mention grounds of opposition in the statement of grounds of the appeal or of the cross-appeal, would the Board be competent to take a decision on them.
In application to the present case, the applicant is the appellant and the opponent has not filed a cross-appeal. The Board would not be allowed to examine the other earlier rights that had not yet been examined by the Opposition Division as the opposition was successful under the UK mark.
Obviously, there was no reason for the applicant to even mention, in its appeal, the other earlier trade marks in its statement of grounds of the appeal, which were not examined in the contested decision and on which it had already had the possibility to comment before the Opposition Division in its observations in reply to the opposition. The applicant concentrated, its statement of grounds of the appeal, on the incorrect application of the ground of opposition that led to the refusal of the application, that is a likelihood of confusion with one of the earlier UK marks, which is no longer a valid earlier trade mark in the present proceedings.
Nor would the opponent, who had succeeded with its opposition, at first instance, and was therefore not adversely affected by the non-examination of the other earlier rights, in accordance with the first sentence of Article 67 EUTMR, be able to file its own separate appeal or cross-appeal, in accordance with Article 68(2) EUTMR. Even though the wording of Article 68(2) EUTMR is more ambiguous, as it refers to a request that seeks ‘a decision annulling or altering the contested decision on a point not raised in the appeal’, and does not simply call it a ‘cross appeal’, as in Article 25 EUTMDR, the opponent could not have requested, in the response to the appeal, a decision annulling the contested decision because the Opposition Division had not examined the other earlier rights (see paragraph 72 below).
Moreover, there was no reason for the opponent to refer to its opposition at first instance to the extent that it had not yet been examined by the Opposition Division.
Nor is the examination of the other earlier rights ‘a matter of law’ that needs to be examined by the Board on its own initiative. The examination of further grounds of opposition such as in the present case, is not an ‘essential procedural requirement’, which needs to be examined as a matter of law, such as the appropriate reasoning of the decision or the right to be heard, pursuant to Article 94(1) EUTMR or the exercise of discretion for late documents in the application of Article 95(2) EUTMR. Nor is it necessary, to resolve the other grounds of opposition as a matter of law, in order to ensure a ‘correct application of the EUTMR having regard to the facts, evidence and arguments presented by the parties’, such as would be the correct application of the criteria of the grounds to be applied, as for example the full examination of the similarity between the goods and the signs in order to apply Article 8(1)(b) EUTMR.
In line with this first opinion, the Board is restricted in its competency to decide on the earlier UK mark, but needs to remit the case to the Opposition Division to decide on the further earlier rights and grounds of opposition, including the other UK mark or EUTMs. The theory argues with the wording of various provisions, such as ‘following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal’ (first sentence of Article 71(1) EUTMR), ‘in order for an effective, efficient and, within the scope of the appeal defined by the parties, complete review of decisions taken by the Office in the first instance by means of … appeal proceedings’ (Recital 8 EUTMR).
This has made the Boards of Appeal into a pure review body that should never take a decision if the first instance has not yet taken a view on the same question before.
Another way of reading Article 27(1) EUTMDR would be to consider that the Board must always first examine the appeal against the contested decision, and thereby be restricted to the grounds of opposition invoked in the statement of grounds, and as the case may be, on the cross-appeal. To that extent the second opinion coincides with the first theory.
However, if the contested decision were annulled and further grounds of the opposition needed to be examined in order to close the opposition, Article 27(1) EUTMDR would not apply and the Board would be free to either decide to continue with the examination of the further grounds or remit the case back to the examiner, pursuant to the second sentence of Article 71(1) EUTMR.
In application of that second way of reading the case at hand, the Board has to carry out a ‘three-step examination’, that is to examine the admissibility first, then secondly the likelihood of confusion with the UK mark of the contested decision, as the appeal was directed against the refusal of the application based on that earlier mark. Now, in the third step, the Board has the possibility to examine both Article 8(1)(b) EUTMR and Article 8(5) EUTMR with the earlier trade marks protected in the European Union. It could also opt to remit the case to the first instance for further examination, in the application of the second sentence of Article 71(1) EUTMR.
According to a third way of reading Article 27(2) EUTMDR the Board is restricted to the ‘grounds’ of the opposition, to the extent that they were invoked in the statements of grounds of the appeal. That theory considers that ‘grounds’ shall be read as legal basis, such as Article 8(1)(b) EUTMR or Article 8(5) EUTMR, in the notice of opposition.
In the application of that theory, the Board is competent to deal with the examination of Article 8(1)(b) EUTMR for all the earlier trade marks, i.e. the UK marks and the EUTMs, whether at first instance or appeal instance. However, it would not be allowed to examine Article 8(5) EUTMR for any of the earlier marks, as this would be a ‘different ground’.
A fourth way of reading Article 27(1) EUTMDR is that the provision does not deal with the repartition of competencies between the first instance and the appeal instance, but rather with the effect the statement of grounds and the cross-appeal may have on the scope of examination by the Boards of Appeal. The Board still enjoys discretion under Article 71(1) EUTMR to either decide as a first instance or as the Board of Appeal. Only if the Board of Appeal decides to act as an appeal instance, should it restrict the examination of the appeal to the grounds of appeal invoked in the statement of grounds.
In the application of that theory, the Board is competent to exercise its discretion under Article 71(1) EUTMR in the same way as the Opposition Division, when choosing the best earlier trade mark and legal basis to close the case efficiently. Rather than starting the examination with the earlier UK mark, it could also choose another earlier mark and/or legal basis, if that would lead to the direct refusal of the application. It could also start with the UK mark, and after having annulled the contested decision in that respect, either continue within the competencies of the first instance or remit the case for a first-time examination of the other earlier rights, or, finally, mix the solutions. Only if the Board examines the appeal against the refusal of the opposition based on a likelihood of confusion with the earlier UK mark, is it restricted to the grounds invoked, to the extent that the facts are the same (which they are not in the present case, as the UK mark is no longer valid).
As a result of the different ways to read Article 27(2) EUTMDR, which may come to different results in the present case, it is appropriate to analyse its legal basis (point d below), the systematic position of that provision within the norms that apply to the Boards of Appeal, in particular Articles 68, 70 and 71 EUTMR, and, more generally of the Office, in particular Article 95 EUTMR (point e) below), the development of the case-law for these norms and the extent those judgments may have been implemented or contradicted by the legislator in Article 27(2) and (3) (points f) to q) below), as well as the objectives of the norm (point r) below) and the criteria to exercise the discretion of Article 71(1) EUTMR (point s) below) in the application of the case.

Article 27 EUTMDR and its legal basis Article 73(a) EUTMR

A systematic interpretation may take into consideration the structure of Article 27 EUTMDR, entitled the ‘examination of the appeal’. The article catches quite different situations, that all have to do with the scope of examination following the written part of the observations before the Boards of Appeal.
The second paragraph deals with the examination of grounds invoked in the statements of grounds in inter partes proceedings, whereas the other paragraphs cope with other aspects of the examination of the appeal, such as the examination in ex parte proceedings of further absolute grounds for refusal that were not raised by the examiner, allowing their examination by the Board (paragraph 1), particular claims or requests, namely distinctiveness acquired through use in the context of absolute grounds, and enhanced distinctiveness in relative grounds or proof of genuine use (paragraph 3), facts and evidence presented for the first time before the Boards of Appeal (paragraph 4), and limitations, division or partial surrenders of the list of goods and services (paragraph 5).
Article 27(2) and (3) EUTMDR did not exist before the legal reform, as a particular norm.
Article 27 EUTMDR has been introduced into the EUTMDR in the application of Article 73(a) EUTMR, where the EUTMR delegates the powers to the Commission to define provisions that relate to ‘the procedure for the filing and the examination of the appeal’.
The legal basis is therefore limited to more procedural issues, to the extent that they relate to the filing and the examination of the appeal, and the cross-appeal.
This legal basis is reflected as such in Article 1(d) EUTMDR. It is not likely that the legal basis was supposed to add important changes through the Delegated Regulation, which were not foreseen in the basic Regulation.

Appeal proceedings in the basic Regulation, in particular Articles 95, 68, 70 and 71 EUTMR

Next, the Delegated Regulation must be interpreted in light of the basic Regulation.
Only the party that is adversely affected may file an appeal (Article 67 EUTMR). The Boards of Appeal are limited in their examination to the relief sought (Article 95(1) EUTMR and Article 21(1)(d) EUTMDR). Each appellant must file a written statement setting out the grounds of appeal (Article 68(1) EUTMR and Article 22 EUTMDR). In inter partes proceedings, the defendant may seek a decision that goes further than the appeal by the appellant and must also contain a written statement setting out the grounds of the cross-appeal (Article 68(2) EUTMR and Article 25(3) EUTMDR).
Pursuant to the wording of Article 70 EUTMR, the proceedings before the Boards of Appeal consist of two stages: the examination and the decision. The Board must first decide on the admissibility, before examining whether the appeal is allowable. In the context of that examination of the admissibility or the allowability of the appeal, the Board shall invite the parties to file observations, if necessary.
Pursuant to the wording of Article 71(1) EUTMR, the Board must terminate the examination of its allowability, logically, with a decision. In accordance with the second sentence, the Board ‘may’ decide to either exercise any power within the competence of the Opposition Division, which in this case is the department which was responsible for the decision appealed, or remit the case to the Opposition Division for further prosecution.
The word ‘may’ indicates that the Board has discretion between the various options. As ‘examination’ and ‘decision’ go together, because the decision is the result and the termination of the examination of the appeal(s), the second sentence applies both to the examination and decision.
Article 71(1) EUTMR has been interpreted by the General Court and the Court of Justice on many occasions.
In the analysis of the case-law, it is deemed appropriate to investigate the development of the case-law, which has later been implemented or to the contrary, may have caused the legislator to introduce changes in the Delegated Regulation. This analysis of the case-law is done in sections f) to q) below.
To make this decision easier for the reader, the relevant part of the cases referred to hereinafter are reproduced with the precise context of the case and the wording of the judgment; the text of the judgment has merely been changed in accordance with the editorial rules of the Boards of Appeal, quoting today’s norms to the extent that the wording has not changed in legal reforms, referring to the parties in accordance with their procedural role of the first instance and adapting also the quotations of the judgments referenced by the Courts.

‘Functional continuity’ in absolute grounds procedure, options and obligations of the Boards of Appeal

Article 71(1) EUTMR has played a role right from the start, in the first ruling of the General Court, in the ‘BABY-DRY’ judgment (08/07/1999, T‑163/98, BABY-DRY, EU:T:1999:145, § 32-45) in the context of an absolute ground examination. As it is the first judgment, which coined the Boards of Appeal’s competencies, and moreover, it was not overturned on that point by the Court of Justice, it is of interest here.
In that case, the examiner refused the application under Article 7(1)(c) EUTMR. The applicant filed an appeal and invoked acquired distinctiveness pursuant to Article 7(3) EUTMR for the first time before the Board of Appeal. The Board of Appeal rejected the request as being belated in the appeal proceedings. The question was taken to the General Court.

Findings of the Court

32 Under Article 7(3) EUTMR, Article 7(1)(c) 'shall not apply if the trade mark has become distinctive in relation to the goods... for which registration is requested in consequence of the use which has been made of it'.

33 In this case, it is common ground that the applicant at no time referred to that provision during the procedure before the examiner. In his decision, the examiner found that the term 'BABY-DRY' was ineligible for registration, having regard to the prohibition in Article 7(1)(c) EUTMR.

34 In the written statement setting out its grounds of appeal against the examiner's decision, the applicant challenged the examiner's finding. In the alternative, it ended its statement with the words: '... we would wish to submit evidence of acquired distinctiveness to the Office as our ‘BABY-DRY’ diapers are on sale throughout Europe since 1993 and heavily advertised'.

35 At paragraph 22 of the contested decision, the Board of Appeal refused to take account of that argument on the ground that it had not been raised by the applicant in the procedure before the examiner. It stated that a decision cannot be criticised for failing to adopt a position on a ground that was not raised. That would not affect the applicant's right to lodge a fresh application for a Community trade mark, this time adducing evidence of acquired distinctiveness in consequence of use.

36 The Court notes that the Office was established by the EUTMR to register Community trade marks under the conditions which that regulation lays down. The Community trade mark, which is valid throughout the territory of the Member States, is an important instrument for the completion of the internal market, as the first recital in the preamble to the regulation makes clear.

37 The Boards of Appeal, which form part of the Office, also contribute, within the limits set by the regulation, to the application of that instrument.

38 In that sense, there is continuity in terms of their functions between the examiner and the Boards of Appeal.

39 That view is borne out by the close interconnection between their duties, as laid down by the rules governing the lodging and preliminary examination of applications. Thus, if an applicant wishes to contest the examiner's decision, he must first file an appeal 'at the Office' (Article 68 EUTMR). The appeal is then submitted to the examiner for '[interlocutory] revision' (Article 69(1) of the regulation). Finally, if the decision is not rectified within one month, it is immediately and automatically remitted to the Board of Appeal (Article 69(2) of the regulation).

40 The procedure before the Boards of Appeal is divided into two separate stages: examination and decision.

41 Under Article 70(2) EUTMR, 'In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications ... issued by itself.'

42 Under Article 71(1) EUTMR, 'Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal'. That provision also states that the Board is to determine the appeal either by exercising any power within the competence of the department which was responsible for the decision appealed or by remitting the case to that department for further action.

43 It follows from those provisions and from the scheme EUTMR that it was not open to the Board of Appeal, which enjoys the same powers in determining an appeal as the examiner, simply to reject the applicant's arguments based on Article 7(3) EUTMR solely on the ground that they were not raised before the examiner. Having considered the appeal, it should have either ruled on the substance of that issue or remitted the matter to the examiner.

44 That does not by any means preclude the Board of Appeal, under Article 95(2) EUTMR, from disregarding facts or evidence which the parties did not submit to it in due time. But that cannot be the case here. First of all, the applicant clearly indicated at the end of the written statement setting out its grounds of appeal that it intended to rely on Article 7(3) EUTMR, and secondly, it was not given any time-limit within which to submit the evidence that it had offered to adduce.

45 In the light of all those factors, the Court finds that, by declaring the applicant's arguments based on Article 7(3) EUTMR to be inadmissible, the Board of Appeal has infringed Article 71 of that regulation.

The expression in paragraph 38 of that judgment, that there is ‘continuity in terms of their functions’ between the examiner and the Boards of Appeal, has often been repeated later in the General Court’s case-law, albeit not in the case-law of the Court of Justice.
To be more precise, that expression must be understood as meaning that the continuity in terms of the functions of the first instance and the Board is an option for the Board, in terms of the second sentence of Article 71(1) EUTMR. As the General Court clarified later in paragraph 43 of the judgment:

‘insofar as the Board had considered the appeal, it should have either ruled on the substance of that issue or remitted the matter to the examiner, only limited to the application of Article 95 EUTMR.’

If the Board decides within the competencies of the examiner, it also has the obligations of the examiner, for example to hear the parties (09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 47; 16/03/2017, T‑473/15, APUS / ABUS, EU:T:2017:174, § 38).
It may well be that the General Court was influenced by the procedural context of the absolute grounds examination, where the wording of Article 95(1) EUTMR foresees that the Office has to examine the facts of its own motion, without however, mentioning that argument. If absolute grounds have to be examined ex oficio, any argument relating to absolute grounds cannot be belated before the Boards of Appeal (10/11/2004, T‑402/02, Bonbonverpackung, EU:T:2004:330, § 96; 22/10/2001, R 130/1999-1, Ideal).
It is worth noting that the legislator has now indicated in the Implementing Regulation that the ‘claim’ for acquired distinctiveness may only be made in the application, or in the observations in reply to the objection letter sent by the examiner (Article 2(2) EUTMIR). This time limit is then also reflected in the Delegated Regulation, whereby the examination of the appeal shall include that claim of acquired distinctiveness provided that it was raised in due time before the examiner (Article 27(3)(a) EUTMIR).
The legislative changes may well be understood as intending to avoid a judgment as in the case of the ‘Baby-dry’ judgment, where the applicant could claim acquired distinctiveness for the first time before the Boards of Appeal.

‘Functional continuity’ in relative grounds procedure, options and obligations of the Boards of Appeal,

In the ‘Kleencare’ judgment (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 18-29), the General Court applied the logic of the ‘continuity in terms of their functions’ to opposition proceedings, which is of interest for the present case.
In that case, upon a request by the applicant, the opponent filed evidence of genuine use. The Opposition Division did not consider the evidence sufficient. In particular, it did not mention in its examination ‘Mr Blacha’s declaration’. The opponent appealed that decision and simply filed further evidence, without challenging the content of the contested decision. The Board of Appeal rejected the appeal. It argued that (1) ‘the appeal does not identify the grounds on which the contested decision was wrong’ and that (2) ‘any evidence that was filed after the time limit to file the corresponding evidence was considered late’. New evidence before the Boards of Appeal was hence belated. The opponent filed an action with the General Court. The General Court annulled the decision for, inter alia, the following reasons:

Arguments of the parties

18 The opponent criticises the Board of Appeal for having committed an error of law in finding that it was not required fully to examine the Opposition Division's decision, particularly its refusal to allow Mr Blacha's declaration in evidence. According to the opponent, the purpose of the appeal procedure provided for by Article 66 EUTMR is to guarantee the legality of decisions by the Office through a review based on a full assessment of the facts relied on by the parties. The opponent observes that the second sentence of Article 71(1) EUTMR allows the Board of Appeal either to exercise any power within the competence of the department which was responsible for the decision appealed or to remit the case to that department for further prosecution.

19 The opponent adds that, as a rule, the Board of Appeal cannot limit its power or its obligation to conduct a full examination of the Opposition Division's decision. It refers to Rule 48 of Regulation 2868/95, which states that the notice of appeal need only contain a statement indicating the extent to which amendment or cancellation of the decision is requested before the Board of Appeal.^²

20 In this case, the opponent states that its appeal before the Office sought to have the Opposition Division's decision annulled, without in any way limiting the Board of Appeal's power as to the extent of its review. It adds that it was only as a precautionary measure — in the event that the Board of Appeal agreed with the Opposition Division's assessment of the evidence produced before it — that it introduced new evidence at the appeal stage. The opponent maintains that the Board of Appeal was thus under an obligation to conduct a full examination of the Opposition Division's decision.

21 The Office contends that in the statement setting out the grounds of its appeal to the Office the opponent merely alleged that, on the basis of the new evidence produced, the fact that the earlier mark had been put to genuine use had to be considered as proven. The Office adds that the statement did not contain anything from which the Board of Appeal could have inferred that the opponent intended to contest the Opposition Division's assessment of Mr Blacha's declaration.

22 Nor, the Office submits, does it follow from the second sentence of Article 71(1) EUTMR that the Board of Appeal was required to examine the legality of the Opposition Division's decision on the assessment of Mr Blacha's declaration. According to the Office, that provision cannot be interpreted as meaning that it requires the Board of Appeal to exercise the powers of the department which took the decision under appeal in respect of points which were not raised in the statement setting out the grounds of appeal.

23 The Office adds that any other interpretation would also be contrary to the principle laid down in Article 95(1) EUTMR, according to which, in inter partes proceedings, its examination is restricted to the facts, evidence and arguments provided by the parties.

Findings of the Court

24. It is apparent from Article 70(1) EUTMR that the Board of Appeal must conduct an examination of the merits of the appeal when it is admissible. In addition, Article 71(1) of the same regulation provides that the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. This last provision contains an indication not only as to the possible content of a decision of the Board of Appeal, but also as to the extent of the examination which it must conduct of the decision under appeal.

25. The case-law shows that there is continuity in terms of their functions between the examiner and the Boards of Appeal (08/07/1999, T‑163/98, BABY-DRY, EU:T:1999:145, § 38-44; 12/12/2002, T‑63/01, Soap II, EU:T:2002:317, § 21). That case-law may also be asked appropriately to the relationship between the other departments of the Office deciding on the application at first instance, such as the Opposition Divisions, Cancellation Divisions and Boards of Appeal.

26. Accordingly, the powers of the Office's Boards of Appeal imply that they are to re-examine the decisions taken by the Office's departments at first instance. In the context of that re-examination, the outcome of the appeal depends on whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling. Thus, the Boards of Appeal may, subject only to Article 95(2) EUTMR, allow the appeal on the basis of new facts relied on by the party who has brought the appeal or on the basis of new evidence adduced by that party.

27. In this case, the parties have addressed the issue of whether, in the proceedings before the Board of Appeal, the opponent expressly called into question the Opposition Division's assessment of the evidence which the opponent had adduced in the proceedings before that division, particularly Mr Blacha's declaration. Paragraph 12 of the contested decision shows that the Board of Appeal found that it did not do so, having regard to the opponent's statement setting out the grounds of its appeal.

28. However, even if the opponent did not expressly call into question the Opposition Division's assessment of the evidence which the opponent had produced in the proceedings before that division, particularly Mr Blacha's affidavit, as the Office submits, that circumstance is not of such a nature as to relieve the Board of Appeal of its obligation to conduct its own assessment of the evidence.

29. In the light of the considerations set out in paragraphs 25 and 26 above, the Court finds that, contrary to what the Office maintains, the extent of the examination which the Board of Appeal must conduct is not, in principle, determined by the grounds relied on by the party who has brought the appeal. Accordingly, even if the party who has brought the appeal has not raised a specific ground of appeal, the Board of Appeal is none the less bound to examine whether or not, in the light of all the relevant matters of fact and of law, a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling.

The ‘Kleencare’ judgment is an important judgment of the General Court that has been quoted many times until recently by the General Court. It stresses that the Boards of Appeal are not limited by the specific arguments of the appeal in the statement of grounds but must carry out a new examination of all the relevant matters of fact and of law at the time it takes a decision on the appeal, pursuant to Article 71 EUTMR. In the case at hand, the Board ought (1) to have examined, in the context of the appeal, the evidence of proof of use already on file before the Opposition Division and (2) to have decided whether to accept the evidence that was not filed in due time, in accordance with Article 95(2) EUTMR.
The notion of ‘a specific ground of appeal’ as employed by the General Court in paragraph 29 of that judgment can only be understood as revising the examination of proof of use as done by the contested decision of the Opposition Division.
A comparable situation led to the ‘Lambretta’ judgment (30/09/2014, T‑132/12, LAMBRETTA, EU:T:2014:843). The EUTM proprietor had to show genuine use of the mark due to an application for a declaration of revocation. It filed specific proof of use before the Cancellation Division, which considered that the evidence was not enough. The EUTM proprietor filed an appeal against the examination, without however, particularly challenging the non-examination of a particular document (‘Mr W.’s statement’). The Board considered that the evidence was insufficient, however it did not examine or discard ‘Mr W.’s statement’. The Office defended the decision and argued before the Court that the Board did not have to re-examine that statement as it had not been challenged before the Boards. The decision was annulled:

23 Secondly, even if the proprietor had not expressly called into question the Cancellation Division’s assessment of the evidence that it had submitted in the proceedings before it and, in particular, that division’s assessment of Mr W.’s statement, as OHIM claims, that would not have relieved the Board of Appeal of its obligation to carry out its own assessment of that evidence.

24 It is apparent from the case-law that the extent of the examination which the Board of Appeal must conduct in respect of the decision under appeal is not, in principle, determined by the grounds relied on by the party who has brought the appeal. Therefore, even if the party who has brought the appeal has not raised a specific ground of appeal, the Board of Appeal is none the less bound to examine whether or not, in the light of all the relevant matters of fact and of law, a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 29).

The General Court has thereby reinforced the obligation of the Boards of Appeal to reassess all the evidence of use, not only to the extent that it was challenged by the parties before the Boards of Appeal, as part of the examination of the matters of law, within the scope of the appeal.

CJEU: Options and obligations of the Boards of Appeal, late evidence

In the ‘Arcol / Capol’ judgment (10/11/2004, T‑164/02, ARCOL / CAPOL, EU:T:2004:328, § 28-30) the General Court took a similar view as in the ‘Kleencare’ judgment, but went a step further. This case shaped the case-law of the Court of Justice.
In that case, the opponent argued, for the first time before the Board of Appeal, that its earlier mark had recognition on the market acquired through use for the purpose of Article 8(1)(b) EUTMR. The Board rejected this argument since the argument, including the facts and the evidence, was introduced after the expiry of the time limits set by the Opposition Division and was therefore belated. The General Court annulled the decision, as it considered that any new document filed within the time limit to file the statements of grounds was filed in due time, in accordance with Article 95(2) EUTMR.

(28) It must be stated, however, that that position is not compatible with the continuity in terms of their functions between the departments of OHIM as affirmed by the Court of First Instance as regards both ex parte proceedings (08/07/1999, T‑163/98, BABY-DRY, EU:T:1999:145, § 38-44, not overturned on this point by the Court of Justice in 20/09/2001, C‑383/99 P, BABY-DRY, EU:C:2001:461; 12/12/2002, T‑63/01, Soap II, EU:T:2002:317 § 21) and inter partes proceedings (23/09/2003, T‑308/01, Kleencare, EU:T:2003:24124, § 32).

(29) It has been held that it follows from the continuity in terms of their functions between the departments of OHIM that, within the scope of application of Article 95(1) in fine EUTMR, the Board of Appeal is required to base its decision on all the matters of fact and of law which the party concerned introduced either in the proceedings before the department which heard the application at first instance or, subject only to Article 95(2), in the appeal (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 32). Thus, contrary to OHIM's assertions concerning inter partes proceedings, the continuity in terms of their functions between the various departments of OHIM does not mean that a party which, before the department hearing the application at first instance, did not produce certain matters of fact or of law within the time-limits laid down before that department would not be entitled, under Article 95(2) EUTMR, to rely on those matters before the Board of Appeal. On the contrary, the continuity in terms of functions means that such a party is entitled to rely on those matters before the Board of Appeal, subject to compliance with Article 95(2) of that regulation before the Board.

(30) Accordingly, in the present case, since the disputed factual evidence was not submitted out of time for the purposes of Article 95(2) EUTMR, but was annexed to the statement lodged by the applicant before the Board of Appeal on 30 October 2000, that is, within the four-month time-limit laid down in Article 68 EUTMR, that Board could not refuse to take account of that evidence.

The Office appealed that judgment to the Court of Justice which annulled it. That judgment became the leading judgment as regards the interpretation of the role of the Boards of Appeal in accordance with Article 71(1) EUTMR (13/03/2007, C‑29/05 P, ARCOL / CAPOL, EU:C:2007:162). It avoided the somehow ambiguous notion of ‘functional continuity’ (see paragraph 58 above), but found that, through the effect of the appeal brought before it, ‘the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact’.

25 In its appeal, OHIM claims that the Court of Justice should set aside the judgment under appeal and refer the case back to the Court of First Instance for it to give judgment on the other pleas in the action. It also requests the Court to order the other parties to the proceedings to pay the costs.

26 Kaul contends that the Court should dismiss the appeal and order OHIM to pay the costs.

Arguments of the parties

27 By its single ground of appeal, which is divided into two parts, OHIM submits that, in finding in paragraphs 29 and 30 of the judgment under appeal that the Board of Appeal of OHIM was bound, in the context of opposition proceedings, to take account of the matters of fact and the evidence submitted for the first time in support of the written statement referred to in Article 68 EUTMR, the Court of First Instance infringed various provisions of that regulation and of the implementing regulation. By the first part of that ground of appeal, OHIM submits that, in finding in those paragraphs that the principle of continuity in terms of functions constrains the Board of Appeal to take account of such matters of fact and evidence, the Court of First Instance misinterpreted and misapplied the combined provisions of Article 47(3) EUTMR, and Rules 16(3) and 20(2) CTMIR, as well as Article 71(1) EUTMR.

29 The time-limit set by OHIM on the basis of the first three of those provisions for an opponent to submit facts and evidence in support of its opposition constitutes an imperative time-limit, on expiry of which such submission of documents before the Opposition Division is precluded, unless that time-limit is extended by OHIM.

30 OHIM claims that facts and evidence not submitted within that time-limit can also not be submitted before the Board of Appeal or lead to the annulment of the decision given by the Opposition Division. Contrary to the finding of the Court of First Instance, the continuity in terms of functions between the Opposition Divisions and Boards of Appeal as demonstrated by Article 71(1) EUTMR relates to the decision making powers of those departments, but cannot deprive of their effect the precise time-limits laid down in Community legislation in order to govern the course of opposition proceedings.

31 The underlying purpose of the opposition proceedings also requires such an interpretation. Such proceedings seek to enable the early identification of conflicts between marks and an administrative decision to be taken quickly in that regard. A decision rejecting the opposition is also not definitive in nature since, pursuant to Article 60(1) EUTMR, it does not prevent the subsequent bringing of annulment proceedings or a counterclaim, in the context of infringement proceedings, based on grounds identical to those put forward in support of the opposition.

32 By the second part of the ground of appeal OHIM submits that, in finding, in paragraphs 29 and 30 of the judgment under appeal, that in so far as it takes place within the four-month time-limit laid down in Article 68 EUTMR, the submission of matters of fact or evidence at the stage of the appeal takes place ‘in due time’ within the meaning of Article 95(2) EUTMR, so that the Board of Appeal must take those facts and that evidence into account, the Court of First Instance infringed that latter provision. OHIM submits, primarily, in that regard that Article 95(2) is not intended to apply where the submission of matters of fact or evidence is, as in the present case, subject to an imperative time-limit before the body giving judgment at first instance. By using such terms as en temps utile, ‘not in due time’ and verspätet, that provision reflects the very concern of avoiding unjustified delays where no such imperative time-limit exists.

34 OHIM submits, in the alternative, that the Court of First Instance unduly restricted the scope of Article 95(2) in finding that, in the context of the appeal procedure, that provision applies only where the submission of matters of fact and evidence occurs after the four-month time-limit referred to in Article 68 EUTMR has expired. Article 95(2) EUTMR should also be applicable in other circumstances, such as where that submission could already have, and ought to have, been made before the Opposition Division.

35 According to Kaul, which addresses the ground of appeal raised as a whole, the Court of First Instance rightly found that the Boards of Appeal have to take account of new evidence as long as the submission of such evidence, including that submitted before those boards, is not submitted out of time for the purposes of Article 95(2) EUTMR. That is the case here since the submission in dispute took place within the time-limit laid down in Article 68 EUTMR.

36 The Board of Appeal constitutes a second instance which is called upon to reassess the substance of a case, without any restriction, prior to any judicial review by the Court of First Instance and the Court of Justice, which, for its part, is restricted to questions of law.

37 Articles 66(2) and 95 EUTMR confirm that the Board of Appeal has exactly the same competences as the body which gave judgment at first instance, in particular, to invite the parties to file their observations or to order measures of enquiry. Read together with those provisions, Article 71(1) of that regulation indicates that the Board of Appeal is bound to make its decision in the light of all the facts in its possession, if it considers itself to be in a position to adopt a decision in which the operative part is the same as that of the decision which is referred to it.

38 The effect of Article 95(1) EUTMR, Kaul submits, is that the submission of facts and evidence in inter partes proceedings is a matter for the parties alone. The parties must therefore retain the right to carry out a more thorough examination at the appeal stage, particularly, in the light of the decision given at first instance.

39 In addition, it is consistent with the principles of legal certainty and procedural economy and the aim of opposition proceedings, namely to enable conflicts between marks to be dealt with before registration of the mark in the interests of the functioning of the internal market, that OHIM be able to adopt its decisions on as broad a factual basis as possible.

Findings of the Court

40 Since both parts of the ground of appeal are closely related they will be examined together. Article 95(2) EUTMR.

41 First, in order to give judgment on the ground of appeal in its entirety, it must be found that, as is apparent from the wording of Article 95(2) EUTMR, OHIM may disregard facts which were not submitted or evidence which was not produced in due time by the parties.

42 Contrary to OHIM’s submission, it results from such wording that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions EUTMR and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late.

43 However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM. In stating that the latter ‘may’, in such a case, decide to disregard facts and evidence, Article 95(2) EUTMR grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account.

44 Where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account. As rightly submitted by OHIM, if it were compelled to take into consideration, in all circumstances, the facts and evidence produced by the parties to opposition proceedings outside of the time-limits set to that end under the provisions EUTMR, those provisions would be rendered redundant.

46 However, the interpretation set out in paragraphs 42 to 44 of this judgment in respect of Article 95(2) EUTMR is capable of preserving the effectiveness of those provisions while making it possible to reconcile various imperatives.

47 It is consistent with the principle of sound administration and the need to ensure the proper conduct and effectiveness of proceedings that the parties have an incentive to respect the time-limits imposed on them by OHIM when hearing a case. The fact that the latter may, if necessary, decide to disregard facts and evidence produced by the parties outside the time-limits prescribed should, in itself, have such an incentive effect.

48 By preserving, nevertheless, the possibility for the department called upon to make a decision in a dispute of taking into account facts and evidence submitted late by the parties, that interpretation is, at least in respect of opposition proceedings, likely to contribute to ensuring that marks whose use could later on successfully be challenged by means of annulment proceedings or counterclaim are not registered. As the Court has already held, reasons of legal certainty and sound administration speak in favour of that approach (see, in particular, (06/05/2003, C 104/01, Libertel, EU:C:2003:244, § 59).

The nature of the proceedings followed before the Board of Appeal of OHIM and Article 71(1) EUTMR

49 Second, no reason of principle related to the nature of the proceedings under way before the Board of Appeal or to the jurisdiction of that department precludes it, for the purpose of giving judgment on the appeal before it, from taking into account facts and evidence produced for the first time at the appeal stage.

50 In that regard, disputes arising from an opposition to the registration of a trade mark are potentially subject to a four-tier review system.

51 A procedure is, initially, a matter for OHIM, its Opposition Divisions first of all and, then, on appeal, its Boards of Appeal which, in spite of the independence enjoyed by those departments and their members, remain nonetheless departments of OHIM. Subsequent to that procedure there exists the possibility of judicial review by the Court of First Instance and, if necessary, on appeal by the Court of Justice.

52 As stated in Article 95(2) EUTMR, the Court of First Instance may annul or alter a decision of a Board of Appeal of OHIM only 'on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of [the] Regulation or of any rule of law relating to their application or misuse of power'.

53 It follows, in particular, from that provision that the Court of First Instance may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. The Court of First Instance may not annul or alter that decision on grounds which come into existence subsequent to its adoption (11/05/2006, C‑416/04 P, Vitafruit, EU:C:2006:310, § 54, 55).

54 It is also apparent from that provision that, as found by the Court of First Instance in a correct and consistent manner, facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before that Community court. The Court of First Instance is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of Community law made by that board, particularly in the light of facts which were submitted to the latter (see, to that effect, 18/07/2006, C‑214/05 P, Sissi Rossi, EU:C:2006:494, § 50). By contrast, that Court cannot carry out such a review by taking into account matters of fact newly produced before it.

55 In accordance with the logic of the institutional architecture referred to in paragraphs 50 and 51 of this judgment, the judicial review thus exercised by the Court of First Instance cannot consist of a mere repetition of a review previously carried out by the Board of Appeal of OHIM.

56 It follows, in that regard, from Article 71(1) EUTMR that, following the examination as to the merits of the appeal, the Board of Appeal is to decide it and that, in doing so, it may 'exercise any power within the competence of the department which was responsible for the decision appealed', that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the contested decision.

57 It thus follows from Article 71(1) EUTMR that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact.

58 As pointed out by Kaul, it also follows from Article 70(2) and Article 95 EUTMR that, for the purposes of the examination as to the merits of the appeal brought before it, the Board of Appeal is to invite the parties, as often as necessary, to file observations on communications issued by itself and that it may also order preliminary measures, among which feature the submission of matters of fact or evidence. Article 71(2) EUTMR states that if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed against, that department is to be bound by the ratio decidendi of the Board of Appeal, 'in so far as the facts are the same'. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before OHIM.

The judgment establishes that the relevant moment of time of any decision of the Office, including the Boards of Appeal, is the moment of the decision, contrary to the General Court, which pursuant to Article 188 BoA-RP^³ has a competency that is limited to the subject matter before it, i.e. the contested decision of the Boards of Appeal.
It does not establish the distribution of tasks between the first instance and the Boards of Appeal, and in particular it does not state that the Board may not remit the case for part of the examination of the merits of the opposition to the first instance, in the application of Article 71(1) EUTMR. Even less it states that the Board may not carry out a new, full examination of the merits of the opposition, in terms of both law and fact itself, even if part of the issues have not yet been decided on for the first time by the Opposition Division.

Scope of the appeal and rights of defence of the winning party

In the ‘Vips’ judgement (22/03/2007, T-215/03, Vips, EU:T:2007:93), the General Court had to deal with the scope of the appeal and the defence rights of the first instance’s ‘winning’ party in the proceedings before the Board of Appeal.
The case predates the integration of the ancillary defence request under Article 8(3) BoA-RP, which was introduced following the example of Article 134(3) RP-GC (now Article 184 RP-GC)^⁴ and corresponds to today’s cross-appeal pursuant Article 68(2) EUTMR. As the other norms relating to the appeal and the opposition proceedings have not changed, it is still important for the interpretation of the scope of the examination before the Boards of Appeal.
In that case, the opponent relied on Article 8(1)(b) and Article 8(5) EUTMR. The Opposition Division dealt with both grounds, however, with different results, as it refused the opposition under Article 8(1)(b) EUTMR as the goods were dissimilar, but granted the opposition and refused the trade mark application under Article 8(5) EUTMR. The applicant appealed. The Board of Appeal rejected the appeal directed against the refusal of Article 8(5) EUTMR. However, it refused to re-examine Article 8(1)(b) EUTMR. It believed this article was outside the scope of the appeal as the opponent had not filed its own separate appeal. On this point the decision was annulled by the General Court, which reasoned as follows:

96 It must be observed that, in accordance with Article 71(1) EUTMR, following the examination as to the merits of the appeal, the Board of Appeal is to decide on the appeal and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the decision appealed. It thus follows from Article 71(1) EUTMR that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact.

97 Where the Board of Appeal considers that one of the relative grounds for refusal put forward by the opposing party in his opposition and upheld by the Opposition Division in its decision is not well founded, the new, full examination of the merits of the opposition referred to in the previous paragraph necessarily entails an examination by the Board of Appeal, before annulling the Opposition Division’s decision, of whether it may be possible to uphold the opposition on the basis of another relative ground for refusal, which was put forward by the opposing party before the Opposition Division but was rejected or not examined by it.

98 It follows that, in the present case, as the Board of Appeal concluded that the relative ground for refusal referred to in Article 8(5) EUTMR was incorrectly upheld by the Opposition Division, as regards the services in Class 42, it was required to re-examine, before annulling the decision of the lower instance, the other relative ground for refusal put forward by the applicant in support of its opposition, namely the likelihood of confusion between the mark applied for and the earlier mark.

99 Contrary to the statement in the contested decision, that examination by the Board of Appeal of the relative ground for refusal concerning the likelihood of confusion would not have broadened the subject-matter of the appeal, since, according to that case-law, an appeal before the Board of Appeal aims to bring about a new, full examination of the merits of the opposition in terms of both law and fact (see paragraph 96 above).

100 Furthermore, that same approach was called for in the present case, on the basis of the following considerations. It is apparent from Article 8 EUTMR that the relative grounds for refusal provided for in that article all result in exactly the same outcome, namely the refusal to register the mark applied for. It is therefore enough that one of the various relative grounds for refusal put forward in an opposition be well-founded for there to be a decision upholding the opposing party’s claim that the mark applied for should not be registered. In those circumstances, if the Opposition Division concludes that one of the relative grounds for refusal put forward by the opposing party is well-founded, it may restrict the examination of the opposition to that sole ground, which is sufficient to justify a decision granting the opposition.

101 Admittedly, the Opposition Division may also decide to examine and, as the case may be, reject the other relative grounds for refusal put forward by the opposing party, as was the case here. However, that part of the grounds for its decision does not constitute the necessary support for the operative part upholding the opposition, it being founded, to the requisite legal standard, on the relative ground for refusal which has been upheld. There would indeed be no question of a rejection in part of the opposition where the opposing party’s claim is granted in its entirety.

102 Nor, in such a situation, is it a case of an accumulation of separate oppositions lodged by the opposing party, some of which are rejected by the Opposition Division after one of them is allowed. The view that each relative ground for refusal put forward by the opposing party is to be regarded as a separate opposition is contrary to the wording of Article 46(1) EUTMR, which provides that ‘notice of opposition … may be given on the grounds that [the mark] may not be registered under Article 8…’. Furthermore, procedural economy before EUIPO requires that there should be no unnecessary increase in the number of oppositions and thus also militates against the view that an opposition founded on several relative grounds for refusal is, in fact, a bundle of several separate oppositions.

103 The above considerations are confirmed by the operative part of the Opposition Division’s decision in the present case, which simply states, in paragraph 1, that, the opposition is upheld in relation to the services in Class 42 and does not make any reference to a rejection in part of the opposition or to the rejection of another opposition relating to the same class.

104 In those circumstances, as regards Class 42, the examination of the applicant’s opposition was not completed by the contested decision, in which the Board of Appeal merely annulled the decision of the Opposition Division. The effect of that annulment was that the opposition, in so far as it concerns Class 42, became pending again and had to be closed by a second decision which either dismissed it or upheld it.

105 Under Article 71(1) EUTMR, that second decision had to be taken by the Board of Appeal itself, unless it decided to remit the case to the Opposition Division. As has already been pointed out, a decision to remit the case would clearly be superfluous in the present case as the Opposition Division has already ruled also on the relative ground for refusal concerning a likelihood of confusion. That approach of the Opposition Division is obviously explained by a wish to avoid, for reasons of procedural economy, a referral of the case back to it by the Board of Appeal if the Board were to annul its decision.

106 The Board of Appeal’s finding that the conditions for the application of Article 8(5) EUTMR were not fulfilled in the present case was therefore not sufficient, on its own, to bring about the rejection of the opposition in respect of the services in Class 42. To produce such an outcome, the Board of Appeal would also have had to adopt the Opposition Board’s assessment of the likelihood of confusion between the marks at issue, which would necessarily have entailed a re-examination of that likelihood.

107 First, the Board of Appeal, in the contested decision, expressly refused to carry out an examination of the relative ground for refusal under Article 8(1)(b) EUTMR and did not, therefore, adopt or validate the reasoning of the Opposition Division relating to that ground. Secondly, the operative part of the contested decision merely annuls the Opposition Division’s decision and does not indicate either the outcome of the opposition or even remit the case to the Opposition Division.

108 It follows from all of the above that, in not examining the abovementioned relative ground for refusal which was put forward by the applicant in good time and reiterated in its observations in response to Elleni Holding’s appeal, the Board of Appeal failed to fulfil its obligations when examining the appeal.

109 In the contested decision, the Board of Appeal adopted a false premise in taking the view that that such an examination required the applicant to lodge a separate appeal against the Opposition Division’s decision. Since, under Article 67 EUTMR, any party to proceedings may appeal inasmuch as he is adversely affected by a decision, the applicant was not entitled, in the present case, to appeal against the Opposition Division’s decision in so far as it related to registration of the mark applied for in respect of the services in Class 42. As has been pointed out in paragraphs 103 to 105 above, that decision, which upheld the opposition and refused the registration of the mark applied for in respect of the services in that class, upheld the applicant’s claims in their entirety.

110 In those circumstances, OHIM’s observation that, among the provisions of EUTMR relating to appeals before the Boards of Appeal, there is no provision similar to that of Article 134(3) of the Rules of Procedure [of the General Court, see above] is irrelevant, since the Board of Appeal was required, in the circumstances of the present case, to examine the other relative ground for refusal put forward before the Opposition Division but rejected by it, even in the absence of an express application to that effect by the opposing party.

111 It follows from all of the above that the second plea must be upheld. The contested decision must therefore be annulled, the Court not assuming OHIM’s role in assessing the relative ground for refusal concerning a likelihood of confusion.

The case is still of importance in defining the scope of the appeal to be decided upon by the Board, as it clarifies that the opponent who wins in the result, here Article 8(5) EUTMR, even though it may loose with an argument, i.e. Article 8(1)(b) EUTMR, may not file its own appeal, as it is not adversely affected, and the appeal is inadmissible in accordance with Article 67 EUTMR.
As the opponent cannot file its own appeal it cannot file a cross-appeal either. The cross-appeal would be inadmissible on the same grounds because the opponent was not adversely affected (with respect to the RP-GC: 11/01/2017, T‑95/16, ROYAL & CAPORAL / KAPORAL, EU:T:2017:3, § 26 et seq.). It illustrates that the cross-appeal is limited to the situation where the party has lost with respect to goods and services, not merely with respect to arguments.
Nor is there that necessity for the opponent, as shown in the ‘Vips’ judgment. The opponent’s defence with respect to the argument it lost at first instance, here Article 8(1)(b) EUTMR, must still be examined by the Board of Appeal, after having decided on the appeal, if it annuls the decision, i.e. with respect to Article 8(5) EUTMR.
Today, the same situation is not excluded by Article 27(2) EUTMDR, which is the norm that is of interest in the present case. The notion of the ‘grounds’ invoked in the appeal or the cross-appeal, cannot mean that the Board is not obliged to examine Article 8(1)(b) EUTMR also, which was already examined by the first instance and may not be invoked in the cross-appeal.
The judgment may be extended to other similar situations, such as the inverse case, where the Opposition Division accepts proof of use, however, rejects the opposition. According to the deciding Board, when the opponent files an appeal, the applicant may raise arguments in defence against the acceptance of the proof of use by the first instance, without filing a cross-appeal. Article 27(2) and (3) EUTMDR cannot be understood as excluding the applicant from raising the issue of proof of use, without a cross-appeal, which in any case would be inadmissible (19/02/2021, R 5/2020-1, Ektosol / Ethisol § 27).

Changing the grounds of the decision by the Boards of Appeal and the rights of defence

In several cases, the General Court was seized because the Board changed the earlier right or other parameters of the examination within its competencies pursuant to Article 71(1) EUTMR, without inviting the parties to file their observations in the application of Article 94(1) or Article 70(2) EUTMR. The case is of particular importance for the present case, first, whether those competencies are different under the new Article 27(2) EUTMDR, and in case they are not, whether the parties must be invited to file observations.
The different opinions described before would come to different results.
In the ‘Budweiser’ judgment (25/03/2009, T‑191/07, Budweiser, EU:T:2009:83, an action to the Court of Justice was rejected 29/07/2010, C‑214/09 P, Budweiser, EU:C:2010:456), one of the issues was whether the Board of Appeal could change the earlier trade mark in its examination of a likelihood of confusion and, if it were competent to do so, whether it might do so without giving the opponent the possibility to file observations in that respect.
In that case, the opponent relied on Article 8(1)(b) EUTMR, on, inter alia, (1) a word mark ‘BUDWEISER’, and (2) a figurative mark . The Opposition Division considered that (1) the renewal of the word mark was filed belatedly and (2) limited its examination to the earlier figurative mark, with which it found a likelihood of confusion. The Board of Appeal considered, contrary to the Opposition Division, that (1) the word mark ‘BUDWEISER’ had been validly renewed and (2) there was a likelihood of confusion with that mark. It did not invite the parties to comment on the change concerning the earlier mark and it did not examine the figurative mark. Before the General Court, the applicant argued, inter alia, that (1) the Board should not have accepted the evidence of renewal, as it had been filed belatedly and (2) if the Board of Appeal were to have wished to take into consideration the earlier international word mark ‘BUDWEISER’, it ought to have informed Anheuser‑Busch thereof and afforded it the opportunity of expressing a view in that regard. In omitting to do so, the Board of Appeal failed to fulfil its obligations pursuant to Article 95 EUTMR.
The General Court decided as follows:

32 First, by its plea alleging breach of the principle of the right to be heard, the applicant is in fact actually alleging infringement of the second sentence of Article 94 EUTMR, which provides that OHIM decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

33 In accordance with that provision, a Board of Appeal of OHIM may base its decision only on matters of fact or of law on which the parties have been able to set out their views (21/10/2004, C‑447/02 P, shade of orange, EU:C:2004:649, § 42; 13/07/2005, T‑242/02, Top, EU:T:2005:284, § 59).

34 That provision lays down, in the Community trade mark law context, the general principle of the protection of rights of defence (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 21; 07/02/2007, T‑317/05, Guitar, EU:T:2007:39, § 26). According to that general principle of Community law, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known (Case 17/95 Transocean Marine Paint Association v Commission [1995] ECR 1063, § 15; 27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 21; 15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 22).

35 In addition, according to case‑law, the right to be heard covers all the matters of fact and law which form the basis for the decision‑making act but not the final position which the administration intends to adopt (03/12/2003, T‑16/02, TDI, EU:T:2003:327, § 75; 07/02/2007, T‑317/05, Guitar, EU:T:2007:39 § 34). Accordingly, the Board of Appeal is not obliged to hear an applicant with regard to a factual assessment which forms part of its final decision (20/11/2007, T‑458/05, Tek, EU:T:2007:349, § 45).

36 In the present case, there is no need, in the context of the first plea, for the Court to rule on whether evidence of the renewal of the earlier international word mark BUDWEISER (R 238 203) was filed in good time. it is to be noted, first, that by notice of opposition of 28 September 1999, Budvar relied on the earlier mark before OHIM. According to the extract from the World Intellectual Property Organisation (WIPO) Register, which Budvar submitted to OHIM, the mark was valid at the time when the notice of opposition was filed.

37 Second, it must be pointed out that Budvar expressly states in the grounds of its opposition that the mark applied for and the earlier international word mark BUDWEISER (R 238 203) are identical.

38 Third, by letter sent to the Opposition Division on 19 May 2003, Anheuser‑Busch inter alia contested the validity of the earlier international word mark BUDWEISER (R 238 203) on the ground that the evidence of renewal of the mark had not been produced before the deadline of 26 February 2002. That evidence of renewal was submitted by Budvar on 21 January 2004.

39 Fourth, in the appeal brought by Anheuser‑Busch against the first decision of the Opposition Division (see paragraph 9 above), in its response of 24 January 2005, Budvar also relied, in support of its opposition, on the earlier international word mark BUDWEISER (R 238 203).

40 Fifth, in the appeal brought by Anheuser‑Busch against the second decision of the Opposition Division (see paragraph 13 above), Budvar, in its response of 28 July 2006, stated that the earlier international word mark BUDWEISER (R 238 203) had to be taken into account and that, inasmuch as the goods concerned were identical, the mark justified the upholding of the opposition.

41 Sixth, it should be pointed out that, in the context of the reply of 10 October 2006 before the Board of Appeal, Anheuser‑Busch had the opportunity to respond to the arguments put forward by Budvar concerning the earlier international word mark BUDWEISER (R 238 203), which it did not do, as it conceded in its written submissions before the Court of First Instance.

42 It follows that, in view of Budvar’s observations before the Opposition Division and the Board of Appeal and the opportunities to respond offered to Anheuser‑Busch, the latter was in a position to put forward its observations on the validity of the earlier international word mark BUDWEISER (R 238 203), which, moreover, it did before the Opposition Division.

43 In addition, it follows from Article 71(1) EUTMR that, following the examination of the allowability of the appeal, the Board of Appeal is to decide on the appeal and that, in doing so, it may, inter alia, ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is, in the present case itself to rule on the opposition, rejecting or upholding the opposition, and in so doing to uphold or annul the decision of the OHIM department which ruled at first instance. It thus follows from Article 71(1) EUTMR that the effect of the appeal brought before it is that the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (13/03/2007, C‑29/05 P, ARCOL / CAPOL, EU:C:2007:162, § 56, 57).

44 It follows from all the above that the Board of Appeal did not fail to fulfil its obligations pursuant to the second sentence of Article 94 EUTMR in not expressly inviting Anheuser‑Busch to present its comments on the earlier international word mark BUDWEISER (R 238 203).

45 The other arguments put forward by Anheuser‑Busch are not such as to call that finding into question.

46 First, if those arguments were to be understood as meaning that Anheuser‑Busch relies on the principle of the protection of legitimate expectations in support of the first plea, it must be recalled that the principle extends to any individual in a situation where it is apparent that the Community authorities, by giving him precise assurances, have caused him to entertain justified hopes (17/12/1998, T‑203/96, Embassy Limousines & Services v Parliament, EU:T:1998:302, § 95; 19/03/2003, T‑273/01 Innova Privat-Akademie v Commission EU:T:2003:78 § 26; 05/04/2006, T‑388/04, Línea acabada en triángulo, EU:T:2006:107, § 26). Precise, unconditional and consistent information coming from authorised and reliable sources amount to such assurances (19/03/2003, T‑273/01 Innova Privat-Akademie v Commission EU:T:2003:78, § 26; 05/04/2006, T‑388/04, Línea acabada en triángulo, EU:T:2006:107, § 27).

47 It should be stated at the outset that Anheuser‑Busch did not receive precise assurances that the earlier international word mark BUDWEISER (R 238 203) would not be taken into account in the examination of the opposition. The fact that, in the second decision, the Opposition Division did not take into account the earlier mark cannot constitute such an assurance since, as has already been pointed out in paragraph 43 above, the Board of Appeal is required to carry out a new, full examination of the merits of the opposition, in terms of both law and fact.

The approach in the ‘Alder Capital’ judgment (13/04/2011, T‑209/09, Alder Capital / Halder, EU:T:2011:169) was similar. In this case, the Board of Appeal changed the earlier right and the legal basis.
The Cancellation Division (1) rejected the application for a declaration of invalidity based on Article 8(1)(b) EUTMR, because of the lack of proof of use; however, (2) it declared the contested trade mark invalid based on Article 8(4) EUTMR. The Board of Appeal (1) annulled the decision on Article 8(1)(b) EUTMR, accepting the proof of use and refusing the application on the basis of the earlier mark. (2) It did not decide on Article 8(4) EUTMR. The EUTM proprietor challenged the Board’s decision before the General Court.

21 … where the Board of Appeal finds that one of the relative grounds for refusal put forward by the opposing party in support of its opposition and upheld by the Opposition Division in its decision is not well founded, the new, full examination of the merits of the opposition necessarily means that, before annulling the Opposition Division’s decision, the Board of Appeal must consider whether it may be possible to uphold the opposition on the basis of another relative ground for refusal, put forward by the opposing party before the Opposition Division but which the latter has rejected or left unexamined (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 97).

22 It is also apparent from the case-law that the powers of the Boards of Appeal of OHIM imply that they are to re-examine the decisions taken by OHIM bodies at the first level of adjudication. In the context of that re-examination, the outcome of the appeal depends on whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 26).

23 It is in the light of those considerations, which are applicable both to opposition proceedings and to invalidity proceedings (see, to that effect, KLEENCARE, paragraph 22 above, paragraph 25), that the plea relied upon by Alder Capital must be examined.

24 In the present case, an appeal was brought before the Board of Appeal for annulment of the decision of the Cancellation Division, which had found that there was no proof of genuine use of the marks registered by the proprietor, but had upheld, on the basis of the earlier unregistered Netherlands rights, the application for a declaration of invalidity under Article 8(4) EUTMR.

25 The Board of Appeal was therefore required to carry out a full examination of the application for a declaration of invalidity, in terms both of law and of fact. In that context, it was able to make a ruling in relation, not only to Article 8(4) EUTMR, but also to the genuine use of the earlier marks and the potential likelihood of confusion between those marks and the mark ALDER CAPITAL, on the basis of Article 8(1)(b) EUTMR.

26 That conclusion is unaffected by the fact that the application for a declaration that the Community trade mark at issue was invalid had been made on the basis of different rights (trade marks and trade names).

27 Article 68(1) EUTMR does not draw any distinction between the various relative grounds for invalidity, whether based on earlier marks or on other rights.

28 Consequently, there is no need to differentiate between, on the one hand, cases where applications for a declaration of invalidity are based on a single earlier right and, on the other, cases where applications for a declaration of invalidity are based on a number of different earlier rights.

29 Furthermore, although the proprietor’s application to the Board of Appeal on the basis of Article 8(3) of Regulation No 216/96 (‘RP-BoA’, cf. see Article 68(2) EUTMR after the legislative reform), as amended, was regarded as admissible, that fact is irrelevant to the present case, since neither the aim nor the effect of that provision is to prevent the Board of Appeal from carrying out, even of its own motion, a new, full examination of the substance of the case.

30 In the light of all the foregoing, the first plea must be rejected as unfounded, without it being necessary to rule on the proprietor’s obligation to file a separate appeal against the decision of the Cancellation Division, or on the lawfulness of Article 8(3) of Regulation No 216/96 (‘RP-BoA’, cf. see Article 68(2) EUTMR after the legislative reform), as amended. As the case may be, the Board may change the reasoning and the opposition may be upheld for other reasons than the ones chosen by the Opposition Division.

In the ‘Bellram’ judgment (15/01/2013, T‑237/11, Bellram / RAM, EU:T:2013:11), the Board examined the same trade mark as the Opposition Division and then continued with the examination of another mark.
The opponent relied, inter alia, on (1) an earlier Spanish figurative mark, and (2) a word mark ‘RAM’. The Opposition Division found a likelihood of confusion with the earlier figurative mark. The Board did not agree as it took the view (1) that the figurative mark had not been substantiated by proof of registration. However, it found (2) a likelihood of confusion with the word mark ‘RAM’ and dismissed, as a the result, the appeal. The applicant argued before the General Court that its right to be heard was violated and that the Board was not competent to assess other trade marks for the first time.

The first plea in law, alleging breach of the applicant’s right to be heard and of the Board of Appeal’s power of assessment

19 In the context of the first plea in law, the applicant raises, in essence, two main complaints. First, the Board of Appeal breached the applicant’s right to be heard under Articles 70(2), 94 and 95 EUTMR. Second, the Board of Appeal misconstrued its own discretion under Article 4(2) and Article 10 of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), as amended by Commission Regulation (EC) No 2082/2004 of 6 December 2004 (OJ 2004 L 360, p. 8) (‘RP-BoA’)^⁵, read in conjunction with the right to be heard under Articles 70(2), 94 and 95 EUTMR. The applicant maintains that the Board of Appeal should have invited it to submit observations on the earlier word mark in the proceedings before it, since the Opposition Division had compared the mark applied for only with the first earlier figurative mark.

20 OHIM and the applicant contest the applicant’s argument.

21 In the first place, as regards the applicant’s complaint that the Board of Appeal breached its right to be heard, it should be noted at the outset that under Article 70(2) EUTMR, ‘[i]n the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself’.

22 Furthermore, Article 94 EUTMR provides as follows: ‘Decisions of [OHIM] shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.’

23 It is settled case-law that Article 94 EUTMR lays down, in Community trade mark law, the general principle of the protection of rights of defence (see, by analogy, 25/03/2009, T‑191/07, Budweiser, EU:T:2009:83, § 33-34 and the case-law cited). In so far as Article 70(2) and Article 95 EUTMR lay down the right of parties to be heard on the observations, facts and evidence adduced before the Board of Appeal, those two articles lay down, in Community trade mark law, the general principle of rights of the defence.

24 In accordance with that general principle of European Union law, also enshrined in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union (OJ 2010 C 83, p. 389), a person whose interests are appreciably affected by a decision taken by a public authority must be given an opportunity to make his point of view known (see 25/03/2009, T‑191/07, Budweiser, EU:T:2009:83, § 34 and the case-law cited).

25 In addition, it is settled case-law that it follows from Article 71(1) EUTMR that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on it and that, in doing so, it may, inter alia, ‘exercise any power within the competence of the department which was responsible for the contested decision’, that is to say, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or annulling the decision taken at first instance before OHIM. It thus follows from Article 71(1) EUTMR that the effect of the appeal brought before it is that the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see 25/03/2009, T‑191/07, Budweiser, EU:T:2009:83, § 23 above, paragraph 43 and the case-law cited).

26 Moreover, Article 95 EUTMR states as follows: ‘(1) In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. (2) [OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned.’

27 In the present case, it must first be noted that it is not clear from either the provisions relied on by the applicant or the case-law that the Board of Appeal is required to ask the parties for their observations on the existence of a likelihood of confusion between the mark applied for and one of the earlier marks if, like in the present case, the Board of Appeal bases its assessment of the likelihood of confusion on an earlier mark which the Opposition Division did not take into account but which was relied upon in support of that opposition. It is not disputed by the applicant that, by notice of opposition of 9 January 2007, the intervener relied inter alia on the earlier word mark in support of that opposition, or that the intervener expressly stated, in the grounds of its opposition lodged on 19 June 2007, that there is a likelihood of confusion between the mark applied for and, in particular, the earlier word mark.

28 Second, it must be found that the applicant had an opportunity to present, both before the Opposition Division and the Board of Appeal, its arguments that there is no likelihood of confusion between the mark applied for and, in particular, the earlier word mark, but that it chose not to develop its arguments in that regard before the Board of Appeal. It is common ground that, by letter of 22 December 2009, the applicant put forward arguments, in the appeal which it brought against the Opposition Division’s decision, by which it sought to dispute only the existence of a likelihood of confusion between the mark applied for and the first earlier figurative mark, and not between the mark applied for and the earlier word mark. However, in so far as the opposition was based inter alia on the earlier word mark and the Board of Appeal had a discretion, under Article 71(1) EUTMR, to assess the likelihood of confusion between just that earlier mark and the mark applied for, it was for the applicant to submit, in accordance with Article 95(1) EUTMR, in the appeal before the Board of Appeal, its observations on the earlier word mark if it wished the Board of Appeal to address them in the contested decision. The applicant cannot therefore claim that it could not foresee that the Board of Appeal would base its assessment of the likelihood of confusion on the earlier word mark.

29 It is clear from the assessments in paragraphs 27 and 28 above that the Board of Appeal did not breach the applicant’s right to be heard by not expressly inviting it to submit observations on the earlier word mark.

30 In addition, in so far as the applicant did not put forward any arguments, in its appeal brought against the Opposition Division’s decision, with regard to the existence of a likelihood of confusion between the mark applied for and the earlier word mark, it is not entitled to criticise the fact that the Board of Appeal did not explicitly address those arguments in the contested decision. While the Board of Appeal is called upon to carry out a new and full examination of the merits of the opposition, it follows, however, from Article 95 EUTMR, as set out in paragraph 26 above, that the Board of Appeal is required to examine only the pleas and arguments raised before it. Otherwise, that would lead to the Board of Appeal taking a decision on pleas and arguments that the applicant did not wish to raise before it at that stage of the proceedings.

31 It follows from the above findings (paragraphs 27 to 30 above) that the applicant’s first complaint must be rejected as unfounded.

32 In the second place, so far as concerns the applicant’s complaint that the Board of Appeal breached its own power of assessment in so far as it was required to inform the applicant of its intention to replace, in the context of the assessment of the likelihood of confusion, the first earlier figurative mark with the earlier word mark, it must be noted, with regard to the rules of law – which it alleges have been breached – referred to in paragraph 19 above, that Article 4(2) of Regulation No 216/96 (‘RP-BoA’) provides as follows: ‘The rapporteur [in each Board of Appeal of OHIM] shall carry out a preliminary study of the appeal. He may prepare communications to the parties subject to the direction of the Chairman of the Board. Communications shall be signed by the rapporteur on behalf of the Board.’

33 Moreover, Article 10 of Regulation No 216/96 (‘RP-BoA’) states that: ‘[i]f a Board deems it expedient to communicate with the parties regarding a possible appraisal of substantive or legal matters, such communication shall be made in such a way as not to imply that the Board is in any way bound by it’.

34 It must therefore be found that, contrary to what the applicant claims, the two provisions of Regulation No 216/96 (‘RP-BoA’) set out in paragraphs 32 and 33 above, and which the applicant submits must be read in conjunction with Articles 70(2), 94 and 95 EUTMR, which provide for the right to be heard, do not impose an obligation on the Board of Appeal to inform the parties of its intention to take account, when assessing the likelihood of confusion, of one or all of the earlier marks upon which the opposition is based.

35 The applicant’s second complaint and the first plea in law in its entirety must, therefore, be rejected as unfounded. In principle, the Boards of Appeal have the obligation, but to a certain extent also the liberty, to carry out a new, full examination of the substance of the case, both in law and in fact.

In the ‘Wesergold / Westerngold’ judgment, (24/11/2015, T‑278/10 RENV, WESTERN GOLD / WeserGold et al., EU:C:2015:876), the situation was similar. The opponent relied on several earlier marks. The Opposition Division found that there was likelihood of confusion with one of them. The Board of Appeal (1) did not find a likelihood of confusion with that mark and then (2) continued with the examination of the remaining trade marks and as a result rejected the opposition in its entirety.
After referring, inter alia, to the ‘Arcol / Capol’ and ‘Belram / RAM’ judgments, the General Court confirmed that it followed from functional continuity that the Board of Appeal had to examine all the other earlier marks, as it did, as soon as it concluded, contrary to the decision of the Opposition Division, that there was no likelihood of confusion with the first earlier mark (paragraph 59). As the opponent had the opportunity, both before the Opposition Division and before the Board of Appeal, to put forward its arguments concerning the likelihood of confusion between the mark applied for and the earlier marks, even though it preferred not to put forward specific arguments relating to each of the earlier marks, there was no violation of its right to be heard in the application of the second sentence of Article 94 EUTMR. Since the opposition was based on all the earlier marks and the Board of Appeal was empowered, pursuant to Article 71(1) EUTMR, to examine the likelihood of confusion between the mark applied for and all those earlier marks, it was for the applicant, pursuant to Article 95(1) EUTMR, to submit, in the appeal before the Board of Appeal, its specific arguments relating to each of the earlier marks, insofar as that was justified. The opponent could not therefore successfully argue that it could not have foreseen that the Board of Appeal would base its examination of a likelihood of confusion on all the earlier marks (24/11/2015, T‑278/10 RENV, WESTERN GOLD / WeserGold et al., EU:C:2015:876, 60-61).
This judgment hence allows the Board to (1) annul a decision of the Opposition Division, considering that there is no likelihood of confusion with the earlier mark on which the contested decision is based, and (2) it may then continue to examine the other earlier trade marks for the first time. By doing so, it does not need to invite the parties to file observations beforehand again.
In the ‘Generia / Generalia Generacion renovable’ judgment (09/12/2014, T‑176/13, Generia, EU:T:2014:1028, § 31, 32), the Board did not decide as a Board of Appeal, on whether the examination by the Opposition Division was correct, but directly changed the scope of examination, i.e. the earlier goods.
In that case, the trade mark was partially refused by the Opposition Division, which considered, inter alia, that the goods and services applied for were similar to the goods in Class 7 of the earlier mark. The Board rejected the appeal. However, in its examination of the similarity between the goods and services, the Board changed the goods to be compared, as it compared the goods of the trade mark applied for with those of the earlier mark in Class 40, and without inviting the applicant to file further observations. The General Court allowed this change explicitly, referring to the ‘Budweiser’ and ‘Bellram / RAM’ judgments (25/03/2009, T‑191/07, Budweiser EU:T:2009:83, § 43; 15/01/2013, T‑237/11, Bellram / RAM, EU:T:2013:11, § 27).
The Court of Justice rejected the appeal against that judgment (08/09/2015, C‑62/15 P, Generia / Generalia Generacion Renovable, EU:C:2015:568, § 35, 36, 41), referring to the ‘Arcol / Capol’ and ‘Unibanco’ judgments (13/03/2007, C‑29/05 P, ARCOL / CAPOL, EU:C:2007:162, § 57; 19/05/2011, C‑308/10 P, Unibanco, EU:C:2011:327, § 40). It highlighted that the Board could chose the earlier goods as long as the opponent had not relied merely on some of them.
This case clarifies that, within the options of Article 71 EUTMR, the Board does not always need to examine the appeal first, that means whether or not the contested decision is wrong, before exercising its discretion to step into the shoes of the first instance. In fact, the Board has the same options as the Opposition Division that is also free to decide which is the strongest case for the opponent, in order to start its examination of the opposition. In that case, the Board may decide to compare the goods of the trade mark applied for with the goods in Class 40 rather than those in Class 7 of the earlier mark.
In the ‘Fair & Lovely (fig.) / NEW YORK FAIR & LOVELY et al.’ judgment (17/02/2017, T‑811/14, Fair & Lovely (fig.) / NEW YORK FAIR & LOVELY et al., EU:T:2017:98), the opposition was based on (1) a Benelux mark and (2) a Spanish mark. The Opposition Division decided on the likelihood of confusion as regards (1) the Benelux mark. As the Benelux mark was the object of an application for a declaration of invalidity, the Board of Appeal changed the examination to (2) the Spanish mark, with the same outcome. The case was taken to the General Court.

The head of claim seeking annulment of the contested decision

25 In support of the application for annulment, the applicant raises two pleas in law. The first plea alleges infringement of Article 71(1) and of the second sentence of Article 94 EUTMR, in that the Board of Appeal wrongly failed to rule on the appeal as it had been brought by the applicant, before carrying out a fresh assessment of the case. The second plea alleges infringement of Rule 20(7)(c) and of Rule 50(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 on the implementation EUTMR (OJ 1995 L 303, p. 1), in so far as the dismissal of the application for suspension of the opposition proceedings was vitiated by misuse of powers and manifest errors of assessment.

The first plea in law, alleging infringement of Article 71(1) and of the second sentence of Article 94 EUTMR

26 The applicant claims that the Board of Appeal misapplied Article 71(1) EUTMR, in that it conducted a fresh examination of the opposition on the basis of the intervener’s earlier Benelux trade mark No 201114, without examining beforehand, as it ought to have done, whether or not the appeal brought by the applicant against the decision of the Opposition Division, in so far as that decision was based solely on the earlier Spanish mark, was well founded. In doing so, the Board of Appeal also disregarded the principle of legitimate expectations and misused its powers.

27 The applicant also alleges infringement of the second sentence of Article 94 EUTMR, in so far as it could not reasonably foresee that the earlier Benelux trade mark No 201114 would play a role in the contested decision, when that mark did not play any role in the decision of the Opposition Division, and in so far as the Board of Appeal did not give it the opportunity to set out its position with regard to that mark.

28 EUIPO and the intervener dispute the applicant’s arguments.

29 It must be noted at the outset that, in the present action, the applicant does not challenge the contested decision, either in so far as it held that the opposition based on the applications and registrations resulting from the conversion of the intervener’s EU trade mark application No 2956498 was admissible, or in so far as it concluded that there was a likelihood of confusion between the applicant’s EU trade mark application and the earlier Benelux trade mark No 201114 relied on by the intervener. By its first plea in law, the applicant criticises the Board of Appeal for having misapplied Article 71(1) and the second sentence of Article 94 EUTMR by dismissing the appeal on the basis of that earlier Benelux trade mark, instead of first re-examining the decision of the Opposition Division in the light of the earlier Spanish trade mark on which that decision was based.

30 That argument cannot be accepted.

31 First of all, it is clear from Article 71(1) EUTMR that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on it and that, in doing so, it may, inter alia, ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is to say, give judgment itself on the opposition by either rejecting it or declaring it to be well founded, thereby either upholding or annulling the decision taken at first instance before EUIPO. Thus, it is apparent from that provision that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see 09/12/2014, T‑176/13, Generia, EU:T:2014:1028, § 30 and the case-law cited, confirmed on appeal by order of 08/09/2015, C‑62/15 P, GENERIA / GENRALIA GENERACION RENOVABLE, EU:C:2015:568, § 35).

32 Furthermore, pursuant to the second sentence of Article 94 EUTMR, EUIPO’s decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision affirms, in EU trade mark law, the general principle of protection of the rights of the defence. In accordance with that general principle, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity effectively to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision (see, to that effect, 09/12/2014, T‑176/13, Generia, EU:T:2014:1028, § 27-29 and the case-law cited).

33 First, it is common ground that the intervener had based the opposition on all the national and Benelux trade mark applications resulting from the conversion of its earlier, rejected, EU trade mark application, with the result that those marks, including the earlier Benelux trade mark No 201 114, were the subject of the dispute before the Opposition Division and the arguments exchanged between the parties.

34 Secondly, it is clear from the applicant’s pleadings lodged on 7 August 2013 that it based its action, before both the Opposition Division and the Board of Appeal, on the challenge to all the earlier national marks relied on by the intervener, and that it did not present specific arguments in relation to each mark, but relied generally, and therefore indiscriminately, on all the earlier marks (see, to that effect, 24/11/2015, T‑278/10 RENV, WESTERN GOLD / WeserGold et al., EU:C:2015:876, § 61). It is also clear from the applicant’s pleadings of 30 January 2014 that, through those pleadings, the applicant notified the Board of Appeal of the filing of cancellation actions against all of the earlier marks and that those pleadings also do not contain any specific arguments in relation to the earlier Spanish mark, the applicant having merely indicated that the action for cancellation of that mark had been drawn up and filed in August and September 2013, respectively, and that it would diligently pursue that action.

35 Since the opposition was thus based on all of the earlier marks, the Board of Appeal had, under Article 71(1) EUTMR, the power to carry out a new, full examination of the merits of the opposition, in particular, with regard to the earlier Benelux mark No 201114, by conducting a new examination of the likelihood of confusion, for the purposes of Article 8(1)(b) EUTMR (09/12/2014, T‑176/13, Generia, EU:T:2014:1028, § 31; 24/11/2015, T‑278/10 RENV, WESTERN GOLD / WeserGold et al., EU:C:2015:876, § 61).

36 As EUIPO contends, it is not clear, either from the provisions relied on by the applicant or from the case-law, that the Board of Appeal is required to ask the parties for their observations on the existence of a likelihood of confusion between the mark applied for and one of the earlier marks if, as in the present case, the Board of Appeal bases its assessment of the likelihood of confusion on an earlier mark which the Opposition Division did not take into account but which had been validly relied on in support of that opposition (15/01/2013, T‑237/11, Bellram, EU:T:2013:11, § 27).

37 Nor can the applicant allege infringement of the right to be heard, given that it had an effective opportunity to present its observations on the earlier Benelux mark No 201114 both before the Opposition Division, following the intervener’s conversion of EU trade mark application No 2956498 to national and Benelux marks, and before the Board of Appeal. In that context, the second sentence of Article 94 EUTMR does not impose any obligation on the Board of Appeal to inform the parties of its intention to take into account, when assessing the likelihood of confusion, one or all of the earlier marks upon which the opposition is based (15/01/2013, T‑237/11, Bellram, EU:T:2013:11, § 34).

38 Finally, that assessment cannot be called into question by the applicant’s other arguments based on infringement of the principle of legitimate expectations and misuse of powers.

39 According to settled case-law, the right to rely on the principle of legitimate expectations extends to any person in a situation where an EU institution has caused him or her to have justified expectations. A person may not plead infringement of this principle unless he or she has been given precise assurances by the administration (see 14/06/2012, T‑293/10, seven squares of different colours, EU:T:2012:302, § 38 and the case-law cited).

40 The applicant had no legitimate expectations that the Board of Appeal would give a ruling on the basis of the earlier Spanish mark, if only because, as has been pointed out above, its appeal was based on a challenge to all of the earlier national and Benelux marks resulting from the intervener’s conversion of EU trade mark application No 2 956 498 and because, as is clear from established case-law, the Board of Appeal was entitled to conduct a new examination of the opposition on the basis of all the earlier marks relied on by the intervener, including the earlier Benelux mark No 201 114.

41 Furthermore, it is settled case-law that a decision may amount to a misuse of powers only where it appears, on the basis of objective, relevant and consistent factors, to have been taken in order to achieve an end other than that stated (see 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 22 and the case-law cited).

42 The applicant, however, has not adduced any evidence to substantiate a misuse of powers. On the contrary, it is clear from the foregoing that the Board of Appeal had to conduct a fresh examination of the opposition on the basis of the marks resulting from the intervener’s conversion of EU trade mark application No 2 956 498, which undeniably included the earlier Benelux mark No 201 114, the existence of which was established and on which the Board, for reasons of economy of procedure, could rely in order to dismiss the appeal.

This judgment is another example of the possibility that the Board of appeal may, in the application of Article 71(1) EUTMR, base its decision on an earlier mark different from the one that the Opposition Division chose, without examining the earlier trade mark or the legal basis the Opposition Division used to come to its decision.

Scope of examination by the Boards of Appeal: normal or enhanced distinctiveness

When examining the conditions of the opposition in its decision on the appeal, the Board is requested to, in principle, carry out the same examination as the first instance. However, certain issues may be excluded from the scope of the examination to be performed by the Board of Appeal.
An example is the ‘Hooligan / Olli Gan’ judgment (01/02/2005, T‑57/03, Hooligan, EU:T:2005:29). In that case, the opponent relied on a French and a Portuguese mark. The Opposition Division refused the contested trade mark because of a likelihood of confusion in both countries, due to the (1) identical nature of the goods, and (2) the visual, (3) phonetic and, consequently, (4) conceptual similarity between the word marks at issue. Before the Board of Appeal, the applicant challenged the way in which both trade marks would be understood and, in particular, the conceptual differences between the trade marks. The opponent did not file any observations. The Board of Appeal annulled the contested decision and found that there was no likelihood of confusion because French and Portuguese consumers were aware of the usual meaning of the English word ‘hooligan’, which was different from the trade mark applied for. The opponent filed an action to the General Court and argued that the examination of a likelihood of confusion was erroneous and, for the first time, that the earlier mark (5) enjoyed enhanced distinctiveness through reputation. The EUIPO submitted that the General Court should only enter into the arguments that the applicant had brought before the Boards of Appeal. Since the applicant did not contest, before the Boards of Appeal, (1) the identical nature of the goods, the use of the marks, the relevance of only the French and Portuguese markets, and (2) the lack of visual similarity between the marks in conflict, such matters could no longer be raised before the General Court without changing the subject-matter of the dispute contrary to Article 135(4) BoA-RP. Even less could it take into consideration (5) any facts and evidence on reputation, which was raised for the first time before the Court.
The General Court took the opportunity to explain the scope of an examination of a Board of Appeal.

18 It should also be borne in mind that it follows from the principle of continuity of functions between the different bodies of OHIM that, in matters within the scope of Article 95 EUTMR, the Board of Appeal is required to base its decision on all the matters of fact and of law contained in the decision contested before it which the party concerned introduced either in the proceedings before the department which heard the application at first instance or, subject only to Article 95(2), in the appeal. In particular, the extent of the examination which the Board of Appeal must conduct is not, in principle, determined solely by the grounds relied on by the party who has brought the appeal (see, to that effect, 23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 29, 32).

19 As regards the factual context, it follows from Article 95(2) EUTMR that it is for the parties to produce before OHIM in due time the matters of fact on which they intend to rely. It follows that no contention of illegality on the part of OHIM may be made regarding matters of fact which were not submitted to it.

20 Accordingly, matters of fact which are relied on before the Court of First Instance without having been submitted previously before any of the bodies of OHIM must be dismissed (see, to that effect, 05/03/2003, T‑237/01, BSS, EU:T:2003:54, 61-62, upheld on appeal by order of the Court of Justice in 05/10/2004, C‑192/03 P, BSS, EU:C:2004:587, § 18; 03/07/2003, T‑129/01, Budmen, EU:T:2003:184, § 67; 04/11/2003, T‑85/02, Castillo, EU:T:2003:288, § 46; 13/07/2004, T‑115/03, Gas Station, EU:T:2004:236, § 13).

21 As regards the legal framework, the Court observes that, in proceedings relating to relative grounds for refusal, the very wording of Article 95(1) in fine EUTMR requires that the examination carried out by OHIM be restricted to the facts, evidence and arguments provided by the parties. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal on which the party concerned has relied and the related facts and evidence it has presented (see 22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 28 and case-law cited therein). The criteria for applying a relative ground for refusal or any other provision relied on in support of arguments put forward by the parties are naturally part of the matters of law submitted for examination by OHIM. It should be borne in mind in this regard that a matter of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of the EUTMR having regard to the facts, evidence and arguments provided by the parties. Thus the matters of law put forward before the Board of Appeal also include any matters of law which must necessarily be examined for the purpose of assessing the facts and evidence relied on by the parties and for the purpose of allowing or dismissing the arguments, even if the parties have not put forward a view on those matters and even if OHIM has omitted to rule on that aspect. Likewise, if it is alleged that OHIM has committed an irregularity in dealing with the parties’ arguments, such as, for example, breach of the audi alteram partem rule, that alleged irregularity also forms part of the legal framework of the case.

22 It follows that the matters of law relied on before the Court of First Instance which have not been raised previously before the bodies of OHIM, in so far as they relate to a matter of law which it was not necessary to resolve in order to ensure a correct application EUTMR having regard to the facts, evidence and arguments provided by the parties, cannot affect the legality of a decision of the Board of Appeal relating to the application of a relative ground for refusal, since they do not form part of the legal framework of the dispute as it was brought before the Board of Appeal. They are, consequently, inadmissible. By contrast, when a rule of law must be upheld or a matter of law must be ruled upon in order to ensure a correct application EUTMR having regard to the facts, evidence and arguments provided by the parties, a matter of law relating to that issue may be relied upon for the first time before the Court of First Instance.

23 Lastly, it should be borne in mind that such rules on the admissibility of matters of fact also apply to OHIM and to interveners appearing before the Court of First Instance, pursuant to Article 134 of the Rules of Procedure (see, regarding evidence adduced by an intervener, 18/02/2004, T‑10/03, Conforflex, EU:T:2004:46, § 52). As regards matters of law, interveners are subject to the same rules on admissibility as applicants. The principle of equality of arms requires that applicants and interveners before the Court of First Instance have the same means at their disposal.

24 In the present case, the Court notes that the opponent did not submit observations before the Board of Appeal. OHIM submits that the Court of First Instance can no longer examine matters which were not put forward before the Board of Appeal relating to the identical nature of the products in question, the geographical areas for which proof of use of the earlier marks was adduced, the relevance of the geographical areas retained for the analysis and the lack of visual similarity between the marks in conflict. For the reasons set out in paragraph 18 above, this argument cannot be accepted.

25 The Court finds that those matters were part of the factual and legal framework before the Board of Appeal. All of those matters were dealt with by the Opposition Division in its decision, in response to the arguments of the parties or of its own motion, since those issues necessarily had to be resolved in order to rule in the opposition proceedings. Accordingly, the Board of Appeal necessarily based, or should have based, its decision on all matters of fact and of law which led to the decision contested before it. Such matters may therefore be debated as to their merits before the Court of First Instance.

26 However, as regards the high degree of distinctiveness nature of the earlier marks, both inherently and in terms of how well known they are, on which the opponent relies, it is clear that, in the light of the case-file before OHIM, the opponent never relied on that high degree of distinctiveness before OHIM, either before the Opposition Division or, a fortiori, before the Board of Appeal, since the opponent was not present before that Board.

27 The Court has held in that connection that the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether there is a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 24 and operative part). In that case the Court gave the proper interpretation of Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the wording of which is largely comparable to that of Article 8(1)(b) EUTMR. Moreover, the seventh recital in the preamble to the EUTMR states that the assessment of the likelihood of confusion depends, in particular, on ‘the recognition of the trade mark on the market’.

28 However, the EUTMR differs from that directive in that the legislature included in it rules governing the activity of the administrative unit in charge of marks and the rights and obligations of persons intervening before that administrative unit. Thus, under Article 95(1) in fine of that regulation, the examination of relative grounds for refusal is restricted to the facts, evidence and arguments provided by the parties. Under Article 95(2) of the same regulation, OHIM may disregard facts which are not submitted or evidence which is not submitted in due time by the parties concerned. Since reliance on a high degree of distinctiveness constitutes a plea containing a mixture of fact and of law, a distinction must be drawn according to whether or not OHIM is able to rule on the arguments of the parties, having regard to the evidence they have submitted.

29 Turning, first, to the distinctive character resulting from the fact that the earlier marks are well known, the Court notes that that character has been relied on by the applicant solely for the purposes of the assessment of the likelihood of confusion for the purposes of Article 8(1)(b) EUTMR.

30 Under Article 95 EUTMR, it is for OHIM to examine any plea relating to the distinctive character of a mark owing to its reputation. However, if a party has failed to rely on either the reputation of earlier marks or to adduce evidence in support of that reputation, OHIM cannot be criticised for not having ruled on that aspect of its own motion. First, since the reputation of a mark is largely a purely conjectural matter, it is for the parties to provide sufficient precision in their argument in order to enable OHIM to rule on their argument in a comprehensive manner. Second, the assessment of reputation is based, in principle, on matters of fact which it is for the parties to present. If the party bringing the opposition proceedings intends to rely on the fact that its mark is well known, it is required to put forward facts and, if necessary, evidence to enable OHIM to determine the truth of such a claim (22/06/2004, T‑66/03, Galáxia, EU:T:2004:190, § 32).

31 Accordingly, the Court finds that OHIM was not required to examine the reputation of the earlier marks in question because that reputation was not part of the opposition proceedings brought before it. The applicant’s plea relating to the reputation of its earlier marks and the evidence relating thereto must therefore be dismissed as inadmissible.

32 Turning, second, to the inherent distinctive character of an earlier mark, the Court finds, conversely, that OHIM was required to examine that matter, if necessary of its own motion, once opposition proceedings had been brought. Unlike reputation, the assessment of intrinsically distinctive character does not presuppose any matter of fact which is up to the parties to establish. Moreover, that assessment does not require the parties to provide facts, arguments or evidence tending to establish that inherent distinctive character, since OHIM alone is able to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based.

33 It follows, in the present case, that the inherent distinctive character of the opponent’s earlier marks in the assessment of the likelihood of confusion was one of the matters of law which had to be resolved in order to ensure a correct application EUTMR having regard to the facts, arguments and evidence put forward by the applicant before OHIM. Consequently, the opponent’s argument relating thereto must be examined on its merits.

34 Lastly, as regards the matters of fact put forward for the first time before the Court of First Instance, OHIM has not identified annexes to the application which are relevant to an aspect other than the reputation of the earlier marks already dismissed above. However, it is apparent from the case-file that Annexes A 7 and A 8, which show that the connotation of hooligan suggested by the earlier marks OLLY and GAN has already been noted, are specifically intended to demonstrate the incorrectness of the Board of Appeal’s finding that the marks in question are conceptually different. Although those annexes support the analysis of the matters of fact and of law contained in the contested decision, they were not submitted to OHIM. Accordingly, those annexes are not part of the factual framework put forward before the Board of Appeal and are therefore inadmissible.

35 Likewise, it is proper to dismiss the new facts put forward by the interveners, namely results of a search on the Internet site Google, because that evidence was not adduced during the administrative procedure before OHIM. Similarly, the interveners’ statement that the mark for which registration is sought has a highly distinctive character because of its intensive use must also be dismissed, because that argument was not put forward before OHIM.

This judgment clarifies that enhanced distinctiveness may not be raised for the first time before the Boards of Appeal (see to the contrary, 10/11/2004, T‑164/02, ARCOL / CAPOL, EU:T:2004:328, which the Court of Justice annulled).
The wording of the ‘Hooligan’ judgment is reflected in Article 27(2) EUTMDR. ‘Matters of law’, mentioned in paragraph 21 in fine of that judgment, which might include an irregularity in dealing with the parties’ arguments, such as, for example, breach of the audi alteram partem rule, that alleged irregularity also formed part of the legal framework of the case.
Further, ‘matters of law’ may, in line with the same paragraph, include all the other conditions that need to be ruled on by the Office even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of the EUTMR having regard to the facts, evidence and arguments provided by the parties.
The General Court stated that ‘the identical nature of the products in question, the geographical areas for which proof of use of the earlier marks was adduced, the relevance of the geographical areas retained for the analysis and the lack of visual similarity between the marks are such conditions that must necessarily be examined by the Board of Appeal’, even though they have not been appealed before the Board.
The General Court takes the view, in paragraph 32, that ‘the Opposition Division and the Board of Appeal would also need to include the assessment of the intrinsically distinctive character, as this does not presuppose any matter of fact which is up to the parties to establish’.
However, according to the General Court, the Opposition Division cannot be blamed for not having examined enhanced distinctiveness of its own motion (see paragraph 30 of that judgment).
Similarly, the examination of reduced distinctiveness of a trade mark, for example due to the meaning of a trade mark, is a matter that must be based on facts and evidence, which need in principle to be provided by the parties in accordance with Article 95(1) EUTMR, unless those are well-known facts. In that context, the Court of Justice considers that ‘the specific evaluation of the impact of a trade mark on consumers, clearly defined in relation to the goods and services for which registration of the sign is requested, amounts to a finding of fact’ (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 42).
The principles of the ‘Hooligan’ judgment were applied in the ‘Fennel’ judgment (13/06/2007, T‑167/05, Fennel, EU:T:2007:176). The applicant for the trade mark received an opposition by the trade mark ‘FENJAL, claiming the similarity between the trade marks, the identity between the goods and the earlier mark’s enhanced distinctiveness. The Board of Appeal refused the opposition, examining the presumed perception of the relevant public, on the basis of facts and evidence put forward by the applicant and on facts derived from generally acquired practical experience, without examining enhanced distinctiveness.

2. The first plea, alleging breach of Article 95(1) and the second sentence of Article 94 EUTMR

Arguments of the parties

81 The opponent submits that the contested decision infringes Article 95(1) and the second sentence of Article 94 EUTMR in that the Board of Appeal based its decision on new facts and arguments which were never put forward or discussed by the parties, upon which the opponent has not had the opportunity to express its views, and which are relevant to the basis on which the contested decision was made.

82 In the first place, the opponent claims that the Board of Appeal wrongly held that the level of attentiveness of consumers of cosmetics was higher than average and that cosmetics were normally bought on sight.

83 In the second place, the Board of Appeal considered that the signs in question were conceptually different in the English-speaking countries. However, it was only before the Board of Appeal that the opponent suggested that in English the word element ‘fennel’ meant a vegetable.

84 In the third place, according to the opponent, the Board of Appeal disregarded the evidence which it had submitted before the Opposition Division demonstrating the intensive use and the reputation of the earlier mark FENJAL in Germany, and thus failed to take account of its distinctiveness.

85 OHIM rejects the opponent’s arguments to the effect that the Board of Appeal infringed Article 95(1) and the second sentence of Article 94 EUTMR.

86 In the first place, OHIM submits that it has a duty to examine of its own motion all relevant matters of law in the case, as set out in Article 8(1)(b) EUTMR, for the purposes of determining whether or not a likelihood of confusion is likely to arise, when assessing whether an opposition is to be upheld.

87 As regards the conceptual similarity of the signs, OHIM cites the case-law of the Court of Justice to the effect that the global assessment of the visual, phonetic and conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components.

88 Consequently, in the absence of any factual evidence or argument on the file concerning the meaning of the signs at issue, the Board of Appeal was bound to check of its own motion whether the signs could be intellectually linked in the public’s mind on account of their possible meaning in any of the official languages of the European Union.

89 Moreover, OHIM points out that the meaning of signs may be examined by referring to dictionaries, that is to say, generally accessible sources. In drawing conclusions from a dictionary definition which was not adduced by the parties, the Board of Appeal did not therefore infringe Article 95(1) EUTMR.

90 As regards the level of attention of the consumer, OHIM takes the view that this varies according to the category of goods or services in question. In the absence of any factual evidence or argument in that regard on the file, the Board of Appeal was nevertheless bound to evaluate of its own motion the level of attention of the average consumer.

91 As regards whether the goods in question are primarily bought on sight or ordered orally, OHIM takes the view that the Board of Appeal was bound to take into consideration and to evaluate the ways in which the goods concerned are marketed, even in the absence of any facts or evidence put forward before it by the parties.

92 In the second place, OHIM contests the opponent’s argument that it should have been heard in order to be able to comment on the references made by the Board of Appeal to the meaning of the word ‘fennel’, the level of attentiveness of consumers and the methods of selling cosmetics, and submits that findings on such matters of law, which are evaluated without prior notice under Article 94 EUTMR, need not be submitted to the parties before a decision is taken. Moreover, that article does not impose any obligation to inform the parties of how the decision-making body concerned intends to apply Regulation No 40/94.

93 Furthermore, OHIM submits that both in the proceedings before the Opposition Division and in those before the Board of Appeal, the applicant had the opportunity to present its views and arguments on the various elements necessary for an assessment of the likelihood of confusion.

94 OHIM also submits that the Board of Appeal established that the conflicting signs, whilst presenting slight visual similarities resulting from the common presence of the sequence of letters ‘fen’ and ‘l’, were clearly dissimilar overall, so that it was not necessary to examine the earlier mark’s degree of distinctiveness acquired through use.

95 OHIM submits that Article 95(1) EUTMR does not impose on it any obligation to take into consideration irrelevant items of evidence.

96 Consequently, according to OHIM, since one of the conditions necessary for Article 8(1)(b) EUTMR to apply was lacking – namely, in the present case, the similarity of the signs – the Board of Appeal was entitled to disregard documentary evidence which does not relate to similarity between the signs but merely broadens the scope of protection enjoyed by the earlier mark.

97 The applicant submits that the opponent’s arguments concerning the breach of Article 95(1) and the second sentence of Article 94 EUTMR are unfounded, since, in assessing whether there was a likelihood of confusion between the two marks at issue, the Board of Appeal merely specified and applied the relevant criterion for assessing whether there is a likelihood of confusion between two marks, namely the presumed perception by the relevant consumers, as defined by the opponent’s evidence.

98 The evidence presented by the opponent shows that the relevant consumer is a woman concerned about, and seeking to improve, her appearance, that she buys her cosmetics on sight and that she wants to have the opportunity to look at them and then to try them before buying them.

99 Thus, according to the opponent, Article 94 EUTMR covers all the facts, assertions and evidence forming the basis of the decision. However, it does not apply to the final position adopted. The Board of Appeal was not under any obligation to ask for the opponent’s comments on the assessment of the facts and evidence put forward.

100 The applicant submits further that the Board of Appeal based its decision on a visual and aural comparison and not on the conceptual comparison between the two signs in question in the English-speaking countries. The Board of Appeal considered such a comparison to be merely speculative, stating at paragraph 20 of the contested decision that, if any conceptual comparison were possible, the signs would be conceptually dissimilar.

101 According to settled case-law, an assessment as to whether there is any similarity between conflicting marks must be made on the visual, aural and conceptual levels. Consequently, the applicant, knowing that such a conceptual comparison would be made, had the opportunity to comment on that point but chose not to do so and cannot, as a result, lay the blame for its own omission on OHIM.

Findings of the Court

102 While the right to be heard, as laid down in the second sentence of Article 94 EUTMR, covers all matters of law or of fact and the items of evidence which form the basis of the decision-making act, it does not, however, apply to the final position which the administration intends to adopt (03/12/2003, T‑16/02, TDI, EU:T:2003:327, § 71-75; see also, to that effect and by analogy, Joined Cases T-129/95, T-2/96 and T‑97/96 Neue Maxhütte Stahlwerke and Lech-Stahlwerke v Commission [1999] ECR II-17, paragraph 231).

103 Moreover, it is apparent from Article 95(1) EUTMR that, in proceedings relating to relative grounds for refusal of registration, such as those in the present case, the examination of the facts carried out by OHIM of its own motion is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.

104 The criteria for applying a relative ground for refusal of registration, as with any other provision relied on in support of the claims made by the parties, are naturally part of the matters of law submitted for examination by OHIM. It should be borne in mind in this regard that a matter of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application EUTMR in the light of the facts, evidence and arguments provided by the parties and the relief sought. Thus, the matters of law put forward before the Board of Appeal also include any question of law which must necessarily be examined for the purpose of assessing the facts, evidence and arguments provided by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on those matters and even if OHIM has omitted to rule on that aspect (01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 21).

105 In the present case, the opponent cannot criticise the Board of Appeal for having taken into consideration in the contested decision the presumed perception of the relevant public – in particular with regard to the consumer’s degree of attention, the manner in which the goods are bought or the meaning of the signs in question – as it appears from the facts and evidence put forward before it by the applicant.

106 Moreover, the Board of Appeal also based its analysis, essentially, on facts derived from generally acquired practical experience of the marketing of cosmetics, namely compact powder, lipstick, eye-shadow, eye-liner, blusher, nail polish and mascara, since those facts are likely to be known by consumers of those products.

107 It follows that the Board of Appeal did not, contrary to what the opponent maintains, base its decision on new facts and arguments. Moreover, the appraisal of the evidence conducted by that Board of Appeal could, in any event, be challenged before the Court of First Instance (18/07/2006, C‑214/05 P, Sissi Rossi, EU:C:2006:494, § 53).

108 With regard to the claims relating to the failure to take into consideration the evidence demonstrating the distinctiveness of the earlier mark in Germany, it must be noted that a procedural irregularity will entail the annulment of a decision in whole or in part only if it is shown that, had it not been for the irregularity, the contested decision might have been substantively different (see 08/06/2005, T‑315/03, Rockbass, EU:T:2005:211, § 33 and the case-law cited).

109 In the present case, it was held at paragraphs 73 to 80 above that the difference between the signs at issue made it impossible to find a likelihood of confusion, however well known the earlier sign may be. It must therefore be held that recognition of the fact that the earlier sign was well known in Germany could not have altered the operative part of the contested decision.

110 It follows from all of the foregoing considerations that the plea alleging infringement of Article 95(1) and the second sentence of Article 94 EUTMR must be rejected.

Violation of the right of defence before the Opposition Division remedied before the Boards of Appeal

In the ‘Eurocool’ judgment (06/09/2013, T‑599/10, Eurocool, EU:T:2013:399), the Opposition Division refused the opposition on the ground that the earlier trade mark had not been substantiated. The Board of Appeal found differently, annulled the decision and remitted the case to the Opposition Division to continue with the opposition proceedings. However, the Opposition Division did not continue with the opposition proceedings, or inviting the parties to file their respective observations, but directly took a decision as to the substance. The applicant filed an appeal. It argued that its rights of defence had been infringed and that there was no likelihood of confusion. The Board of Appeal recognised that the procedural rights were infringed by the Opposition Division but held that it was sufficient that the applicant had the opportunity to file its observations before the Board of Appeal. It then took a decision as to the substance, rejecting the appeal. The applicant challenged the decision, inter alia, because of a violation of the right of defence.
The General Court held that it was sufficient that the parties had the possibility to develop their line of defence, if not before the Opposition Division, at least before the General Court. It therefore rejected the action. In its reasoning, it argued concerning the devolutionary effect of the appeal in its case-law on Article 71(1) EUTMR (06/09/2013, T‑599/10, Eurocool, EU:T:2013:39 § 56).

Limitations of the scope of examination by the Boards of Appeal: requests, statements of grounds, appellant is adversely affected

Whereas several judgments have dealt with aspects when the Board has decided within the competencies of the first instance, the Regulations (see section e) above) and the General Court has also limited the scope of the examination of the Board when deciding as the appeal instance.
A first limitation stems from the requests of the appellant. The appellant may choose to contest the decision only in part. In such a case, Article 95(1) EUTMR obliges the Office to respect this request. Article 21(1)(e) EUTMDR foresees that the appellant must identify the goods or services in respect of which the decision subject to appeal is contested in a clear and unambiguous manner. This provision also applies to the cross-appeal, in accordance with Article 25(3) EUTMDR. To the extent that the request is not clear or ambiguous, the appeal is inadmissible.
A second limitation refers to the statement of grounds of the appeal, obligatory under Article 68(1) EUTMR. A statement of grounds of appeal shall identify, in a clear and unambiguous manner, the grounds of appeal on which the annulment of the contested decision is requested, within the extent identified in accordance with Article 21(1)(e) EUTMDR.
A third limitation results from Article 67 EUTMR, according to which only parties that are adversely affected by the contested decision may appeal decisions of the Boards of Appeal.
The Board may not, for this reason, examine absolute grounds for refusal for goods or services that were not refused by the examiner (03/07/2013, T‑236/12, Neo, EU:T:2013:343).
The same applies to relative grounds: the Board cannot take a decision on relative grounds for goods or services, unless the contested decision has been appealed by the party which lost, which may be either by means of one or two independent appeal(s) or by a cross-appeal by the defendant reacting to the first appeal. The party that is adversely affected by the outcome, must file an appeal to reverse the decision.
For example, an opponent which wins the opposition based on one earlier trade mark may not appeal the contested decision because it wishes to obtain a further assessment of relative grounds for refusal based on other earlier marks, in order to exclude a conversion in those countries where the earlier mark is protected. Such an appeal is inadmissible (16/09/2004, T‑342/02, Moser Grupo Media / MGM, EU:T:2004; see also, in the same sense, 18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 61).

32 It is appropriate to observe at the outset that Article 58 EUTMR provides that ‘any party to proceedings adversely affected by a decision may appeal’.

33 In this instance, it is common ground that the contested decision declared the appeal before the Board of Appeal inadmissible on the ground that the opponent was not adversely affected by the Opposition Division’s decision for the purposes of Article 58 EUTMR.

34 In this connection, it should be stated that the aim of opposition proceedings is to prevent Community trade marks being registered which are in conflict with earlier marks or rights. That interpretation is the only one wholly apt to achieve the objectives EUTMR. The second recital in the preamble to the EUTMR states that the Community arrangements for trade marks enable undertakings, by means of one procedural system, to obtain Community trade marks to which uniform protection is given and which produce their effects throughout the entire area of the Community and that the principle of the unitary character of the Community trade mark thus stated is to apply unless otherwise provided for in the regulation.

35 Accordingly, the aim of opposition proceedings is to give undertakings an opportunity to challenge, by means of one procedural system, applications for Community trade marks which might give rise to a likelihood of confusion with their earlier marks or rights, and not to settle pre-emptively potential conflicts at national level.

36 It is not disputed in this case that the opponent’s opposition was upheld for all the goods and services concerned and that registration of the Community trade mark Moser Grupo Media SL was refused. The decision of the Opposition Division thus allowed the opponent’s claim.

37 It is still necessary to consider the opponent’s argument that the fact that the Opposition Division did not examine either its earlier national marks granted in Austria, Greece and the United Kingdom or its opponent for a Community trade mark had negative legal consequences for it, irrespective of the outcome of the case.

38 On this point, it is certainly the case that Rule 15(1) of Regulation No 2868/95 provides that ‘opposition may be entered on the basis of one or more earlier marks within the meaning of Article 8(2) of the Regulation (‘earlier marks’) or of one or more other earlier rights within the meaning of Article 8(4) of the Regulation (‘earlier rights’)’.

39 Furthermore, it follows from the EUTMR, and in particular from Article 139(1)(a) thereof, which was in force at the material time in this case, that ‘the applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application … to the extent that the Community trade mark application is refused, withdrawn, or deemed to be withdrawn’.

40 It is also the case that the grounds for refusal of an application for a Community trade mark determine whether the application for a Community trade mark may succeed at national level. Article 139(2)(b) EUTMR provides that conversion is not to take place for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark.

41 However, it is common ground that conversion of a Community trade mark application into a national trade mark application is merely optional for an applicant for a Community trade mark. Nor does the conversion procedure confer on applicants the right to have their applications registered by the competent national authorities. Instead, the decision on any national registration is left to the competent national authorities. Furthermore, opposing parties have the opportunity to assert their rights before the national authorities.

42 Moreover, nothing prevents an applicant whose Community trade mark application has been refused following opposition proceedings from filing similar applications with national authorities without having recourse to the conversion procedure.

43 Consequently, the Court finds that the interest which the opponent relies on concerns a future and uncertain legal situation.

44 It must be noted that it is clear from settled case-law that an action brought by a natural or legal person is admissible only in so far as that person has an interest in the contested measure being annulled (Joined Cases T-480/93 and T-483/93 Antillean Rice Mills and Others v Commission [1995] ECR II-2305, paragraph 59; Case T-102/96 Gencor v Commission [1999] ECR II-753, paragraph 40; Case T-212/00 Nuove Industrie Molisane v Commission [2002] ECR II-347, paragraph 33). That interest must be vested and present (Case T-138/89 NBV and NVB v Commission [1992] ECR II-2181, paragraph 33) and is assessed at the day on which the action is brought (Case 14/63 Forgehols de Clabecq v High Authority [1963] ECR 357, 371; and Case T‑159/98 Torre and Others v Commission [2001] ECR-SC IA-83 and II-395, paragraph 28). If the interest which an applicant claims concerns a future legal situation, he must demonstrate that the prejudice to that situation is already certain. Therefore, an applicant cannot rely upon future and uncertain situations to justify its interest in applying for annulment of the contested act (NBV and NVB v Commission, cited above, paragraph 33).

45 It must therefore be held that the decision of the Opposition Division did not adversely affect the opponent when it upheld its opposition for all the goods and services concerned even though the opposition was not upheld on the basis of all the trade marks put forward as grounds for opposition.

46 As regards the alleged need to take into account the applicant’s Community trade mark application, OHIM rightly raises considerations of procedural economy. Since the opposition could be upheld on the basis of a number of earlier national marks, it was not necessary to prolong the proceeding further by suspending it under Rule 20(6) of Regulation No 2868/95, in order to wait until the Community trade mark was registered. Rule 20(6) of Regulation No 2868/95 provides that ‘the Office may suspend any opposition proceeding where the opposition is based on an application for registration pursuant to Article 8(2)(b) of the Regulation until a final decision is taken in that proceeding, or where other circumstances are such that such suspension is appropriate’. Accordingly, suspension remains optional for OHIM, which avails itself of it only when it considers it appropriate.

47 Indeed, to accept the opponent’s argument that OHIM must suspend any opposition proceeding where the opposition is based on an application for registration pursuant to Article 8(2)(b) EUTMR until a final decision is taken in that proceeding could result in a chain reaction. The application for registration pursuant to Article 8(2)(b) of the regulation might itself be subject to an opposition in relation to another application for registration which, in turn, would – if the opponent’s argument is accepted – have to be suspended.

48 As to whether or not the opponent requested, expressly or by implication, a decision on the opposition with the widest effects possible, namely a decision encompassing all the earlier national marks on which it based its opposition and the Community trade mark application, the opponent’s argument cannot be accepted. Since the Opposition Division was in any event under no obligation to examine all the earlier marks or rights for the reasons explained above, the question of the effect, as regards any such obligation, of the scope of the opposition is wholly irrelevant.

49 For the same reasons it is also not necessary to consider whether the application to register the mark MGM at Community level and the existence of Austrian, Greek and United Kingdom marks would have been valid grounds for an opposition.

Limitations of the scope of appeal: request for proof of use before the Board

The General Court has developed a line of case-law that limits the competencies of the Boards of Appeal further.
There was a time when the Regulations did not determine any time limit to request proof of use. Cases came to the General Court where it had to be determined if the opponent could file, for the first time before the Boards of Appeal, a request for proof of genuine use. Contrary to the request for acquired distinctiveness, in accordance with Article 7(3) EUTMR (see the BABY-DRY judgment above), the General Court (18/10/2007, T‑425/03, AMS Advanced Medical Services, EU:T:2007:311, § 107-114) held as follows:

107 It is apparent from a reading of Article 47 EUTMR in conjunction with Rule 22 of Regulation No 2868/95 (CTMIR) that, after OHIM has received notice of opposition to a Community trade mark application, it forwards that opposition to the applicant for that mark and sets it a period within which to file its observations in that regard. Given that the request for proof of genuine use of the mark constitutes, according to Article 47(2) EUTMR, a request which can only be made by the applicant for the Community trade mark, it must be made expressly before the Opposition Division, since that request has the effect of changing the nature of the proceedings by imposing on the opponent an obligation to which he was not necessarily subject.

108 In the absence of such a request before the Opposition Division and if that division did not make a decision on whether the earlier mark had been put to genuine use, the Board of Appeal, which has had a request for proof of genuine use of that mark brought before it for the first time, would be led to re-examine a decision on the basis of a new request which raises a matter which the Opposition Division was not able to examine and on which it did not rule in its decision.

109 It follows from the above that a request for proof of genuine use of the earlier mark can be made only before the Opposition Division.

110 Such an interpretation is not contrary to the principle, relied on by the applicant at the hearing, that there is continuity, in terms of their functions, between the different instances of OHIM, as stated in the case-law of the Court (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 25, 26; 01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 18; 10/07/2006, T‑323/03, La Baronnie, EU:T:2006:197, § 57, 58).

111 In any event, the present case does not concern matters of fact or of law which were not relied on by the applicant before the Opposition Division but a request for proof of genuine use of the earlier mark, that is, a new procedural request which changes the content of the opposition and which is therefore a matter which needs to be addressed prior to examining the opposition, with the result that it should have been made in due time before the Opposition Division.

112 The request for proof of genuine use thus adds that preliminary matter to the opposition proceedings and in that sense changes their content. The submission of that request for the first time before the Board of Appeal would imply the examination by the Board of a new, specific request linked to factual and legal considerations which are separate from those which gave rise to opposition to the registration of a Community trade mark.

113 Although the continuity, in terms of their functions, between the Opposition Division and the Board of Appeal, referred to in the case-law mentioned in paragraph 110 above, implies a re-examination of the case by the Board, it cannot, in any event, justify the submission of such a request for the first time before the Board of Appeal, since that continuity in no way implies an examination by the Board of Appeal of a case which is different from the one submitted to the Opposition Division, namely a case whose scope would have been extended by the addition of the preliminary matter of the genuine use of the earlier mark.

114 In those circumstances, the Board of Appeal rightly decided, in point 14 of the contested decision, that ‘[AMS Advanced Medical Services GmbH]’s request for evidence of use [was] to be rejected because it [was] invoked for the first time in these proceedings, when it could and should have done it in due time before the Opposition Division.

Another judgment dealt with the same question, even though the legal argument in the judgment is slightly different (22/03/2007, T‑364/05, Pam Pluvial, EU:T:2007:96, § 32-41).

First plea: infringement of Article 47 EUTMR

Findings of the Court

32 Pursuant to Article 47(2) and (3) EUTMR, for the purposes of examining an opposition introduced under Article 46 of that regulation, the earlier mark is presumed to have been put to genuine use as long as the applicant does not request proof of that use (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 38).

33 In this case it is common ground that the applicant made such a request for the first time only at the time of the appeal to the Board of Appeal. The applicant however considers that that request was admissible. It argues in that connection, first, that Regulation No 40/94 does not provide for any period for submitting such a request and, further, that to lay down such a time-limit would run counter to the principle stemming from the ninth recital in the preamble to that regulation referred to at paragraph 22 above. The applicant considers, secondly, that it was possible for it to submit its request for the first time before the Board of Appeal under the principle of the continuity of functions between the lower divisions at OHIM and the Boards of Appeal.

34 It must be observed that according to the case-law the request for proof of genuine use of the earlier mark must be made expressly and timeously to OHIM (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 38; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 24; 07/06/2005, T‑303/03, Salvita, EU:T:2005:200, § 77). In that context it has been held that, in principle (and the ninth recital in the preamble to Regulation No 40/94 does not preclude this), the request for proof of genuine use of the earlier mark must be made in the period prescribed by the Opposition Division to the applicant for the Community trade mark to submit its observations in reply to the notice of opposition (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 25 to 28).

35 However, whether the applicant for the mark must submit a request for proof of genuine use of the earlier mark within the time-limit prescribed by the Opposition Division for submission of its observations in reply to the notice of opposition, or whether such a request is to be presented within a specific period which may be imposed on the trade mark applicant by the Opposition Division, after which the latter is entitled to disregard such a request, is not relevant in this case. In fact the applicant did not make a request for proof of genuine use of the earlier mark within the time-limit prescribed pursuant to Article 47(1) EUTMR for submission of its observations on Propamsa's opposition. In addition, OHIM states that no specific time-limit was imposed on the applicant by the Opposition Division for that purpose. However, OHIM argues that in accordance with paragraph 1.1 of directives of the president of OHIM, referred to above (see paragraph 26), which reflect a settled decision-making practice in this field, the applicant should have presented its request for proof of genuine use of the earlier mark at any time during the course of the opposition procedure and before the Opposition Division informed the parties that it was ready to determine the opposition.

36 Therefore, it is not the observance of any period laid down for submission of such a request that is at issue in this case, but rather the question as to the division of OHIM to which the request must be presented and, more particularly, whether the request must imperatively be submitted to the Opposition Division or whether it may still be presented for the first time at the time of the appeal before the Board of Appeal.

37 It must be observed in this connection that the request for proof of genuine use of the earlier mark has the effect of shifting the burden of proof to the opponent to demonstrate genuine use (or the existence of proper reasons for non-use) upon pain of having his opposition dismissed (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 38, 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 24, and 07/06/2005, T‑303/03, Salvita, EU:T:2005:200, § 77). Genuine use of the earlier mark is therefore a matter which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper (FLEXI AIR, cited in paragraph 34 above, paragraph 26). The request for proof of genuine use of the earlier mark therefore adds to the opposition procedure a specific and preliminary question and in that sense changes the content thereof.

38 It must further be observed that, under Article 127(1) EUTMR, an Opposition Division is to be responsible for taking decisions on an opposition to an application to register a Community trade mark, while under Article 130(1) of the same regulation the Boards of Appeal are responsible for deciding on appeals from decisions of, inter alia, the Opposition Divisions.

39 It follows from the foregoing provisions and considerations that it is for the Opposition Division, first of all, to determine the opposition, as defined by the various procedural acts and requests of the parties, including, where appropriate, a request for proof of genuine use of the earlier mark. That is why such a request cannot be made for the first time before the Board of Appeal. To allow the contrary would mean the Board of Appeal examining a very specific request related to new legal and factual matters that go beyond the opposition procedure as submitted and dealt with by the Opposition Division. Yet the Board of Appeal is uniquely competent to determine applications brought against decisions of the Opposition Divisions and not to determine new oppositions itself at first instance.

40 The principle of continuity of functions, as referred to in the case-law of the Court, (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 25-26; 01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 18; 10/07/2006, T‑323/03, La Baronnie, EU:T:2006:197, § 57-58), cannot in any event justify the submission of such a request for the first time before the Board of Appeal, since it does not entail the Board of Appeal examining a case different from that submitted to the Opposition Division, that is to say a case whose scope has been extended by the addition of the preliminary issue of genuine use of the earlier mark.

41 It follows that the contested decision was right to find in this case that the applicant was not entitled to request for the first time at the stage of the appeal before the Board of Appeal that the opponent provide proof of genuine use of the earlier marks relied on in opposition. The first plea must therefore be dismissed.

Later, Article 8(2) EUTMDR (Rule 22(1) CTMIR beforehand), had expressly limited the request for proof of use by the applicant to the observations in reply to the opposition.
In addition, in the latest legislative reform, Article 27(3) EUTMDR reflects time limits in the context of the appeal proceedings, whereby proof of use may only be re-examined if it has been requested in due time before the Opposition Division.

Limitations of the scope of appeal: does not include proof of use

The General Court developed its case-law further, indicating that the Board of Appeal was not allowed to re-examine the proof of genuine use if the examination of the facts and evidence had not been challenged before the Board of Appeal.
In the ‘Often/Olten’ judgment (13/09/2010, T‑292/08, Often, EU:T:2010:399), the applicant requested that the opponent furnish proof of genuine use of the earlier marks. The opponent held, inter alia, that genuine use of the earlier mark ‘OLTEN’ had been proven as regards some of the goods and that there was a likelihood of confusion with some of the goods applied for. The applicant appealed that decision challenging the Opposition Division’s assessment as regards the similarity between the trade marks at issue and the existence of a likelihood of confusion, not mentioning any incorrect examination of genuine use. The Board of Appeal, without examining genuine use of the earlier marks, rejected the appeal. The applicant took the decision to the General Court, complaining, inter alia, that the Board had not re-examined genuine use of the earlier marks.

The first plea, alleging infringement of Articles 70 and 71 EUTMR

Arguments of the parties

19 The applicant claims that the Board of Appeal infringed Articles 70 and 71 EUTMR by failing to examine the issues, first, of the proof of genuine use of the earlier mark OLTEN and, secondly, of the similarity of the goods at issue. Those two issues were debated before the Opposition Division, the applicant having maintained, first, that the use of the earlier mark OLTEN had not been proven and, secondly, that the goods at issue, with the exception of horological instruments, were different.

20 According to the applicant, pursuant to the principle of continuity of functions between the various departments of OHIM, the Board of Appeal was required to examine those issues, even though they were not raised before it. The grounds set out in paragraph 26 of the contested decision are insufficient in this respect.

21 OHIM disputes the applicant’s arguments.

Findings of the Court

22 Under Article 70(1) EUTMR, if an appeal is admissible, the Board of Appeal is to examine whether it is allowable.

23 Under Article 71(1) of that regulation, following the examination as to its allowability, the Board of Appeal is to decide on the appeal and it may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

24 It must be observed, as a preliminary point, that while the applicant refers, in its application, to Article 71(2) EUTMR, it is apparent from its arguments, and from information provided at the hearing, that it is in fact relying on paragraph 1 of that article.

25 It follows from that provision that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (13/03/2007, C‑29/05 P, ARCOL / CAPOL, EU:C:2007:162, § 57).

26 In addition, under Article 95(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, such as those at issue in the present case, the examination of the facts carried out by OHIM of its own motion is restricted to the facts, evidence and arguments provided by the parties and the relief sought.

27 In the context of opposition proceedings, the criteria for applying a relative ground for refusal of registration or any other provision relied on in support of claims put forward by the parties naturally form part of the matters of law submitted for examination by OHIM. An issue of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that issue in order to ensure the correct application EUTMR having regard to the facts, evidence and arguments provided by the parties. Thus the matters of law put forward before the Board of Appeal also include any issue of law which must necessarily be examined for the purpose of assessing the facts and evidence relied on by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on those matters and even if OHIM has omitted to rule on that aspect (01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 21; 13/06/2007, T‑167/05, Fennel, EU:T:2007:176, § 104).

28 In the present case, the applicant claims, essentially, that the Board of Appeal has not performed a full examination of the opposition, having failed to assess, first, the proof of genuine use of the earlier mark OLTEN and, secondly, the similarity of the goods at issue. It states that it did not raise those two issues in its appeal before the Board of Appeal, but submits that they formed part of the context of the dispute before the Opposition Division and, consequently, of that before the Board of Appeal.

29 It must be determined whether those issues were in fact within the context of the dispute brought before the Board of Appeal.

30 As regards, first, the proof of genuine use of the earlier mark OLTEN, opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR does not necessarily bring the issue of genuine use before OHIM.

31 It is in fact a preliminary issue which, once raised by the applicant for the trade mark, must be decided before the opposition proper is examined (see, to that effect, 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 26).

32 The request for proof of genuine use by the trade mark applicant adds that preliminary issue to the opposition proceedings and in that sense changes their content, in so far as it constitutes a new, specific claim linked to factual and legal considerations which are separate from those which gave rise to the opposition to the registration of a Community trade mark (see, to that effect, 18/10/2007, T‑425/03, AMS Advanced Medical Services, EU:T:2007:311, § 112).

33 It follows that the issue of genuine use is specific and preliminary in character, since it leads to a determination whether, for the purposes of the examination of the opposition, the earlier trade mark can be deemed to be registered in respect of the goods or services in question, that issue thus not falling within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark.

34 In the present case it is common ground, first, that the issue of genuine use was raised by the applicant before the Opposition Division, which examined it before it made an assessment of the merits of the opposition and, secondly, that that issue was not brought before the Board of Appeal, the applicant merely disputing the Opposition Division’s assessment relating to the existence of a likelihood of confusion.

35 Therefore, contrary to what the applicant claims, the issue of genuine use does not constitute a matter of law which must necessarily be examined by the Board of Appeal in order to rule on the dispute before it.

36 That finding is not invalidated by the submissions, put forward by the applicant, relating to the principle of continuity of functions between the various departments of OHIM.

37 Admittedly, having regard to that continuity, the extent of the examination which the Board of Appeal must conduct with regard to the decision which is the subject-matter of the appeal is not, in principle, determined by the grounds relied on by the party who has brought the appeal. Even if the party who has brought the appeal has not raised a specific ground of appeal, the Board of Appeal is none the less bound to examine the appeal in the light of all the relevant matters of fact and of law (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 29; 01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 18).

38 Thus, the Board of Appeal is required to base its decision on all matters contained in the decision contested before it which any party concerned introduced either in the proceedings before the OHIM department which heard the application at first instance or, apart from matters which have not been submitted in due time, on the appeal (see 10/07/2006, T‑323/03, La Baronnie, EU:T:2006:197, § 58 and the case-law cited).

39 The fact remains that, in the present case, the plea alleging that the proof of genuine use was insufficient not only was not specifically raised before the Board of Appeal, but also did not constitute a relevant matter for the purposes of the examination of the appeal, which was limited to the examination of the opposition proper, alleging the existence of a likelihood of confusion.

40 Consequently, since the issue of genuine use was not part of the subject‑matter of the dispute before the Board of Appeal, the applicant cannot criticise the Board for having failed to examine it.

41 As regards, secondly, the issue of the similarity of the goods, opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR requires OHIM to adjudicate on whether the goods and services covered by the marks in question are identical or similar and whether those marks themselves are identical or similar.

42 The fact that one or other of those aspects was not expressly disputed before the Board of Appeal does not divest OHIM of the power to adjudicate on that issue (see, to that effect, 10/10/2006, T‑172/05, Armafoam, EU:T:2006:300, § 41-42; 18/10/2007, T‑425/03, AMS Advanced Medical Services, EU:T:2007:311, § 28, 29).

43 Those considerations are supported by the principle of the interdependence of the factors taken into account in the global assessment of the likelihood of confusion, in particular the assessment of the similarity of the trade marks and that of the goods and services covered (see, to that effect, 18/12/2008, C‑16/06 P, Mobilix, EU:C:2008:739, § 47).

44 Therefore, in the present case, the Board of Appeal, ruling on the appeal which followed the opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, was required to adjudicate on the issue of the similarity of the goods in question, even though that issue was not expressly raised before it.

45 Furthermore, contrary to what the applicant maintains, it is apparent from the contested decision that the Board of Appeal did in fact examine that issue.

46 Indeed, it stated in paragraph 26 of the contested decision, that ‘the goods in Class 14, in respect of which the trade mark applied for was refused [by the Opposition Division’s decision], were found to be similar to watches, in respect of which the use of the earlier mark was proved, and sufficient reasons were stated for that finding’.

47 It follows from that paragraph that the Board of Appeal confirmed in their entirety, by adopting them as its own, the findings of the Opposition Division as regards the similarity of the goods, which were, moreover, not disputed by the applicant in its appeal before that Board.

48 In this connection, a Board of Appeal may lawfully adopt the grounds of a decision taken by the Opposition Division, which thus make up an integral part of the reasons for the Board’s own decision (see, to that effect, 09/07/2008, T‑304/06, Mozart, EU:T:2008:268, § 50; 24/09/2008, T‑248/05, I.T.@Manpower, EU:T:2008:396, § 49).

49 Thus, when, as in the present case, the Board of Appeal confirms a lower-level decision of OHIM in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see 09/07/2008, T‑304/06, Mozart, EU:T:2008:268, § 47 and the case-law cited).

50 Therefore, it cannot be held that the Board of Appeal failed to examine the issue of the similarity of the goods or to give reasons for its decision on that issue.

51 In the light of all the foregoing, the applicant has not demonstrated that the Board of Appeal did not carry out a complete examination of the appeal or that it did not state, to the requisite legal standard, the reasons for its decision.

52 Consequently, the first plea is unfounded.

The second plea, alleging infringement of Article 47(2) EUTMR

Arguments of the parties

53 The applicant claims that the proof of use of the earlier mark OLTEN was insufficient. The proof of use adduced by Mr Marín Díaz de Cerio before the Board of Appeal does not refer to his earlier mark OLTEN, but refers rather to his figurative marks. Therefore, genuine use was established only in respect of those figurative marks. The Board of Appeal thus, in the applicant’s submission, wrongly confirmed the findings of the Opposition Division relating to genuine use of the earlier mark OLTEN.

54 OHIM disputes the applicant’s arguments.

Findings of the Court

55 The Court’s review of the legality of a decision by a Board of Appeal of OHIM must be carried out with regard to the issues of law raised before the Board of Appeal (see 31/05/2005, T‑373/03, Parmitalia, EU:T:2005:191, § 24, 25 and the case-law cited).

56 Furthermore, it follows from Article 135(4) of the Rules of Procedure that the parties may not change the subject-matter of the proceedings before the Board of Appeal.

57 In the present case, the applicant claims that the genuine use of the earlier mark OLTEN has not been proved for watches.

58 As is apparent from paragraphs 30 to 40 above, the issue of genuine use of the earlier mark was not part of the subject-matter of the proceedings before the Board of Appeal.

59 Consequently, this plea changes the subject-matter of the proceedings before the Board of Appeal and is therefore inadmissible.

A similar case is the ‘Salmex’ judgment (06/06/2018, T‑803/16, SALMEX (fig.) / SHAPE OF A DISC-LIKE DEVICE DIVIDED BY A WAVE INTO TWO PARTS (3D) et al., EU:T:2018:330), in which the Board of Appeal had examined proof of use of the earlier mark, even though proof of use was not in dispute before the Board of Appeal.

15 In support of its action, the invalidity applicant puts forward two pleas in law. By its first plea, it submits that the Board of Appeal wrongly found, on its own initiative, that the genuine use of the earlier French mark was not an acceptable form of use for the purposes of Article 15(1)(a) EUTMR (now Article 18(1)(a) EUTMR). By its second plea, it contests the assessment of the Board of Appeal that its earlier French mark had not been put to genuine use in connection with inhalers.

16 In its observations on whether to hold a hearing, the invalidity applicant supports the position of EUIPO that the Board of Appeal lacked competence to examine the question relating to the proof of genuine use.

17 EUIPO, for its part, primarily submits that the issue of the genuine use of the earlier mark is a specific and preliminary question which is outside the scope of the examination of the application for a declaration of invalidity and which, in the strict sense, is based on a likelihood of confusion. It submits that by ruling on the issue of genuine use, even though that issue was not raised before it, the Board of Appeal infringed Article 71(1) EUTMR and that the Board of Appeal’s lack of competence must be raised of its own motion by the General Court.

18 In the alternative, EUIPO claims that the Court should dismiss the action as regards its substance. According to EUIPO, contrary to the finding of the Board of Appeal, the invalidity applicant demonstrated that the earlier marks had been put to use under the form in which they were registered. However, it submits that the Board of Appeal correctly found that the use of the earlier marks had not been proven for the goods covered by those marks, namely inhalers.

19 The proprietor makes no observations on the lack of competence of the Board of Appeal. As regards the substance, it submits that it has not been shown that the earlier marks were put to use under the form in which they were registered and that the evidence of that use has not been adduced for inhalers.

20 First of all, the Court points out that, in actions concerning a European Union trade mark, brought against a decision of a Board of Appeal, nothing precludes EUIPO from endorsing the heads of claim of the proprietor, while putting forward all the arguments that it considers appropriate, in performance of its task relating to the administration of European Union trade mark law and the functional independence which the Boards of Appeal are granted in the exercise of their duties (30/06/2004, T‑107/02, Biomate, EU:T:2004:196, § 32-36; 17/03/2009, T‑171/06, Trenton, EU:T:2009:70, § 27).

21 In the present case, the form of order sought by EUIPO, as that of the invalidity applicant, seeks the annulment of the contested decision. Furthermore, even if, contrary to EUIPO, the applicant has not raised in its application the lack of competence of the Board of Appeal to rule as it did, the plea raised by EUIPO alleging the lack of competence of the Board of Appeal is a matter of public policy and must be raised by the Court of its own motion (see, to that effect, 29/02/2012, T‑77/10 & T‑78/10, L112, EU:T:2012:95, § 91).

22 Accordingly, it should be determined whether the Board of Appeal was competent, in this case, to rule on the genuine use of the earlier mark.

23 Under Article 71(1) EUTMR, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal and may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

24 Article 95(1) EUTMR provides that, during proceedings, EUIPO is to examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.

25 It should be noted that an application for a declaration of invalidity based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR does not necessarily bring the issue of genuine use of the earlier mark before EUIPO. Genuine use is a preliminary issue which leads to a determination of whether, for the purposes of the examination of the application for a declaration of invalidity, the earlier trade mark can be deemed to be registered in respect of the goods or services in question. It is therefore outside the scope of the examination of the application for a declaration of invalidity in the strict sense, based on a likelihood of confusion with that mark (see, to that effect, and by analogy, 13/09/2010, T‑292/08, Often, EU:T:2010:399, § 30, 31, 33).

26 The request for proof of genuine use of the earlier mark adds that preliminary issue to the invalidity proceedings and in that sense changes their content, in so far as it constitutes a new, specific claim linked to factual and legal considerations which are separate from those which gave rise to the opposition to the application for a declaration of invalidity (see, to that effect, 13/09/2010, T‑292/08, Often, EU:T:2010:399, § 32; 08/03/2013, T‑498/10, David Mayer, EU:T:2013:117, § 35, 36).

27 It follows that the Board of Appeal can examine the issue of genuine use of the earlier mark only if a party raises it specifically before it (see, to that effect, 24/09/2015, T‑382/14, PROTICURD / PROTIPLUS et al., EU:T:2015:686, § 24 and the case-law cited). In other words, when the issue of genuine use of the earlier mark is not specifically raised before the Board of Appeal, it must be considered as not being part of the subject matter of the proceedings before the Board of Appeal (see, to that effect, 12/03/2014, T‑592/10, BTS, EU:T:2014:117, § 21).

28 In the present case, the issue of genuine use of the earlier marks was raised by the proprietor before the Cancellation Division and was examined by the latter before it made an assessment of the merits of the application for a declaration of invalidity.

29 However, it is apparent from the case-file that the issue was not raised by the parties before the Board of Appeal; the proprietor merely disputed the assessment of the Cancellation Division relating to the existence of a likelihood of confusion and the invalidity applicant did not have a legal interest in challenging the assessment of the Cancellation Division which was favourable to it.

30 Therefore, the issue of the genuine use of the earlier marks was not debated in any way by the parties before the Board of Appeal. It therefore made a ruling of its own motion on that issue. Furthermore, it did not afford the parties the opportunity to state their views in that respect since it is apparent from the case-file that it did not ask them questions on that issue.

31 Since, in the present case, the issue of the genuine use of the earlier marks had not been raised before the Board of Appeal, according to case-law referred to at paragraph 27 above, it did not have competence to make a ruling of its own motion on that issue, as it was no longer the subject matter of the proceedings.

32 Such a finding is not contrary to the principle of continuity in terms of functions between the various divisions of EUIPO, as stated in the case-law of the Court of Justice and the General Court. If that continuity in terms of functions implies a re-examination of the case by the Board of Appeal, it does not in any way imply an examination by the Board of Appeal of a case which is different from the one submitted to the Cancellation Division, namely a case whose scope would have been extended by the addition of the preliminary issue of the genuine use of the earlier mark (see, by analogy, 18/10/2007, T‑425/03, AMS Advanced Medical Services, EU:T:2007:311, § 113; 08/03/2013, T‑498/10, David Mayer, EU:T:2013:117, § 36).

33 In light of the foregoing, the contested decision must be annulled in its entirety and it is not necessary to rule on the pleas in law raised by the applicant seeking to challenge the Board of Appeal’s assessment of the genuine use of the earlier marks.

This case-law has been implemented in Article 27(3) EUTMDR, which explicitly excludes the examination of proof of genuine use, if the parties have not challenged the examination of proof of use.

Limitations of the scope of appeal: Other grounds not to be examined

To the extent that the Board decides to act within the competency of the first instance pursuant to Article 71(1) EUTMR, the question arises whether (a) the Board is obliged to re-examine the contested decision as regards the grounds of the invalidity claim that were not contested in the statement of grounds to the Boards of Appeal and (b) if it is possible to proceed to the examination of further grounds of invalidity within the proceedings before the Boards of Appeal, which were not raised before the Cancellation Division.
An example is the ‘Mouldpro’ judgment (14/02/2019, T‑796/17, MOULDPRO, EU:T:2019:88). In that case, the invalidity applicant filed an application for a declaration of invalidity against the registered trade mark on two grounds: (a) Article 8(3) EUTMR (disloyal agent) and (b) Article 8(4) EUTMR in conjunction with the Danish law of unregistered trade marks. The Cancellation Division rejected the application in its entirety. The invalidity applicant filed an appeal, (a) without mentioning the earlier ground concerning the disloyal agent, or (b) the unregistered Danish trade mark and (c) invoking (for the first time) Article 8(4) in conjunction with the Danish law of company names. The Board decided (a) not to deal with Article 8(3) EUTMR as it was not raised in the grounds of appeal, and even if the conditions were not met, (b) that the earlier unregistered Danish trade mark had not been sufficiently evidenced and (c) not to deal with the additional ground of the Danish company name which was not raised in the application for a declaration of invalidity. The General Court dealt with the competency of the Board on all three of these grounds:

The first plea in law, alleging infringement of Article 60(1)(b) EUTMR, read in conjunction with Article 8(3) thereof

15 In the context of its first plea in law, the invalidity applicant claims that the Board of Appeal erred in finding that it had not demonstrated the existence of an agent-principal or representation relationship between the intervener and itself within the meaning of Article 8(3) EUTMR.

…

19 The proprietor also disputes the admissibility of the first plea in law by claiming that, in the context of the proceedings before the Board of Appeal, the invalidity applicant did not challenge the assessment of the Cancellation Division that the evidence which it had adduced was not sufficient to show the existence of an agent‑principal or representation relationship between itself and the intervener for the purpose of Article 8(3) EUTMR.

20 In accordance with Article 60(1)(b) EUTMR, an EU trade mark is to be declared invalid on application to EUIPO where there exists a mark as referred to in Article 8(3) of that regulation and the conditions set out in that latter paragraph are satisfied. Next, it should be noted that, under Article 8(3) EUTMR, a trade mark cannot be registered where the agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

…

26 As regards the admissibility of the plea, disputed by the proprietor, it must be noted that, admittedly, the invalidity applicant did not raise before the Board of Appeal any infringement, by the Cancellation Division, of Article 60(1)(b) EUTMR, read in conjunction with Article 8(3) thereof.

27 Nevertheless, it follows from the principle of continuity of functions between the departments of EUIPO that the extent of the examination which the Board of Appeal must conduct in respect of the decision under appeal is not, in principle, determined by the grounds relied on by the party who has brought the appeal. Accordingly, even if the party who has brought the appeal has not raised a specific ground of appeal, the Board of Appeal is nonetheless required to examine whether or not, in the light of all the relevant matters of fact and of law, a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 25, 26, 29; 30/09/2014, T‑132/12, LAMBRETTA, EU:T:2014:843, § 24).

28 Since it is common ground that the invalidity applicant invoked the ground for invalidity referred to in Article 60(1)(b) EUTMR, read in conjunction with Article 8(3) thereof, in its application for a declaration of invalidity and that it made submissions in that regard before the Cancellation Division, the unavoidable conclusion is that the present plea appeared in the documents before the Board of Appeal. Consequently, the intervener cannot claim that the present plea is inadmissible on the sole ground that it was not repeated before the Board of Appeal. The Board of Appeal acted correctly in carrying out, in the contested decision, the analysis of the conditions of the ground for invalidity referred to in paragraph 21 above.

29 Accordingly, it is necessary to examine the substance of the first plea in law and therefore the question as to whether the Board of Appeal was right to find that the evidence provided by the applicant was insufficient to show that the second condition laid down in Article 8(3) EUTMR, relating to the existence of a representation relationship, was satisfied in the present case.

The first part of the second plea in law

41 In paragraphs 18 and 19 of the contested decision, the Board of Appeal justified its partial dismissal of the invalidity applicant’s appeal as inadmissible on the ground that, first, the earlier rights on which an application for invalidity are based cannot be extended once the application has been filed and, second, the applicant had invoked for the first time at the appeal stage an earlier Danish company name as a basis for its application for a declaration of invalidity, in addition to an earlier unregistered Danish trade mark.

42 The invalidity applicant takes issue with that assessment and claims, first, that the invocation of the company’s name is not a new argument and that it is the earlier right that invalidity applicant has always invoked and which was established when it was set up in February 2010. Second, the invalidity applicant maintains that the invocation of the company name was documented in the context of the initial application for a declaration of invalidity and in the documents set out in Annexes C.1 and D.7 to the originating application.

43 EUIPO and the proprietor dispute the applicant’s line of argument.

44 It must be noted that, pursuant to Article 163(1)(a) EUTMR, the Cancellation Division is responsible for taking decisions in relation to applications for the revocation and declaration of invalidity of an EU trade mark and, pursuant to Article 165(1) of that regulation, the Boards of Appeal are responsible for deciding on appeals brought against, inter alia, decisions of the Cancellation Divisions. It follows that it is for the Cancellation Division to decide, at first instance, on applications for a declaration of invalidity, as defined by the different applications and various procedural acts of the parties (13/01/2011, T‑28/09, Pine Tree, EU:T:2011:7, § 46).

45 In that context, it is necessary to bear in mind Article 12(1)(b) EUTMDR. That rule provides that an application for a declaration of invalidity based on the current Article 60(1)(c) EUTMR, read in conjunction with Article 8(4) thereof, contains particulars of the right on which the application for a declaration of invalidity is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as a ground for invalidity. Article 15(4) EUTMDR provides that, if EUIPO finds that an application does not comply with Article 12 EUTMDR, it must invite the applicant to remedy the deficiencies noted and reject the application as inadmissible if those deficiencies are not remedied before the expiry of the period prescribed by EUIPO.

46 In the light of the foregoing observations, it must be held, in the first place, as EUIPO submits, that the applicant for a declaration of invalidity cannot invoke, for the first time before the Board of Appeal, the existence of a new ‘unregistered trade mark’ or a new ‘sign used in the course of trade’ as a basis of the ground for invalidity referred to in Article 8(4) EUTMR. To accept the contrary would imply the examination, by the Board of Appeal, of new legal and factual considerations that go beyond the framework of the invalidity proceedings filed with and processed by the Cancellation Division.

However, the first part of that judgment, in particular paragraph 28, raises doubts. An invalidity applicant may well renounce some earlier rights before the Boards of Appeal, to concentrate on the most relevant ones. Not mentioning a specific earlier right in the appeal, albeit the contested decision had refused the application for a declaration of invalidity on this right, appears as implicitly renouncing the application for a declaration of invalidity based on those.
Any appellant or even respondent may decide to focus in its strategy, before the Boards of Appeal, on certain rights rather than on others, in light of the contested decision. The obligation to file a statement of grounds exists to define on which grounds the Boards will be required to examine whether a new decision with the same operative part as the decision under appeal before it may be lawfully adopted at the time of the appeal ruling. Those grounds include arguments that the Opposition or Cancellation Division committed an error or arguments according to which facts or the legal situation may have changed.
The obligation to file a statement of grounds, which is a condition for the admissibility of the appeal, would be meaningless if the Boards of Appeal had, on their own initiative, to decide also on the grounds of the application for a declaration of invalidity that were refused by the Cancellation Division and that were not contested by the invalidity applicant in its appeal.
It would appear that Article 27(2) EUTMR intends to cover this specific case, whereby the Boards of Appeal shall be restricted to the grounds of opposition or of the application for a declaration of invalidity that was examined in the contested decision and that was invoked in the statements of grounds (01/03/, R 77/2020-1, FIMA / Fima (fig.) et al. § 17-22).

Comparison within the institutional context

Interestingly, the General Court has made a structural comparison between the Boards of Appeal of the EUIPO and the ECHA, in the ‘REACH’ judgment (20/09/2019, T‑125/17, REACH, EU:T:2019:638). One of the issues before the General Court was the scope and the intensity of the review conducted by the Board of Appeal. The applicant to the General Court drew a parallel to the proceedings between the two Boards of Appeal, of the EUIPO and of ECHA, comparing both.

90 It is necessary to examine the arguments put forward by the applicant by taking into account the previous considerations relating to the scope and intensity of the review carried out by the Board of Appeal.

91 In the first place, the applicant claims that, under Article 93(3) of Regulation No 1907/2006, functional continuity exists between the Board of Appeal and the ECHA where that agency rules at first instance which is comparable to that existing between the Boards of Appeal of the EUIPO and the units of that office, and that, as a result of that functional continuity, in the context of an action before it against a decision of the ECHA, the Board of Appeal of that agency is required to conduct a full re-examination of all the questions, in particular scientific questions, addressed in the decision contested before it.

92 In that regard, firstly, it should be recalled, as was stated in paragraphs 60 to 80 above, that in the context of the examination of the merits of the action before the Board of Appeal, the procedural rules for the adoption of an ECHA decision where that agency is ruling at first instance are not directly applicable. By contrast, that board applies rules of procedure provided for by Regulation No 1907/2006 and Regulation No 771/2008, which are designed specifically for proceedings before it, and is thus limited to examining, in adversarial proceedings, whether that decision is vitiated by error. In any event, as stated in paragraphs 81 to 86 above, at least in an appeal against an ECHA decision requesting further information in the context of the evaluation of a substance, the Board of Appeal is limited to such an examination.

93 Secondly, it should be noted that, as was stated in paragraph 66 above, Article 93(3) of Regulation No 1907/2006 governs solely the Board of Appeal’s powers after having concluded that an action before it was well founded, and not the scope of the review carried out by that board with regard to the merits of an action brought before it.

94 Thirdly, as regards the applicant’s arguments based on the case-law concerning the Boards of Appeal of the EUIPO, it should be noted that, admittedly, according to the case-law, as a result of the appeal before it, the Board of Appeal of the EUIPO is called upon to carry out a new, full examination, in terms of both law and fact, of the merits of the request or of the dispute brought before the department hearing the application at first instance (see, to that effect, 13/03/2007, C‑29/05 P, ARCOL / CAPOL, EU:C:2007:162, § 57). A Board of Appeal of the EUIPO may therefore not confine itself to examining whether, in the light of the arguments put forward by the applicant, the decision of the department of the EUIPO hearing the application at first instance is vitiated by error, but it is required to examine whether a new decision with the same operative part as the decision subject to appeal before it may be lawfully adopted at the time of the appeal ruling. Therefore, the extent of the examination which the Board of Appeal must conduct in respect of the decision under appeal is not, in principle, determined by the grounds relied on by the party who has brought the appeal (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 26, 29; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 36).

95 However, contrary to what is claimed by the applicant, that case-law cannot be transposed to the Board of Appeal of the ECHA. The nature and scope of the examination carried out by the boards of appeal of EUIPO are highly dependent on the legislative and regulatory context in which it takes place, which is very different from that of the Board of Appeal of the ECHA.

96 In that context, first of all, it should be noted that, in the system established by the EUTMR, the provisions governing proceedings before the units and divisions of the EUIPO apply mutatis mutandis to appeal proceedings before the Board of Appeal. That applies to the general provisions provided for in Chapter IX, Section 1 EUTMR, and in particular to Article 95 of that regulation, which provides that the EUIPO is to examine the facts of its own motion, except in proceedings relating to relative grounds for refusal and invalidity proceedings pursuant to Article 68 of that regulation. Likewise, it should be noted that Article 48 EUTMDR provides that, unless otherwise provided, the provisions relating to proceedings before the instance of the EUIPO which adopted the decision subject to appeal are to be applicable to appeal proceedings mutatis mutandis.

97 By contrast, as regards the ECHA, not only must it be noted that, as was stated in paragraphs 68 to 79 above, the provisions governing the procedure for the adoption of decisions by that agency at first instance are not applicable to appeal proceedings before the Board of Appeal, but it should also be noted that the rules applicable to that board do not contain a provision comparable to Article 48 of Delegated Regulation 2018/625, which provides that the rules of procedure governing the adoption of a decision by the ECHA where the latter rules at first instance are applicable mutatis mutandis to proceedings before that board.

98 Next, it is true that the case-law concerning the Board of Appeal of the EUIPO cited in paragraph 94 above is based in particular on the second sentence of Article 71(1) EUTMR, according to which that board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. According to that case-law, that provision contains an indication not only as to the possible content of a decision of the Board of Appeal of the EUIPO, but also as to the extent of the examination which it must conduct of the decision under appeal (23/09/2003, T‑308/01, Kleencare, EU:T:2003:241, § 24).

99 However, contrary to what is claimed by the applicant, the mere fact that the wording of the second sentence of Article 71(1) EUTMR is similar to that of Article 93(3) of Regulation No 1907/2006 does not permit that case-law to be transposed to the Board of Appeal of the ECHA.

100 In that context, it should be noted that the second sentence of Article 71(1) EUTMR is preceded by a first sentence from which it follows that the Board of Appeal of the EUIPO is to exercise the powers provided for in the second sentence of that paragraph ‘following the examination as to the allowability of the appeal’. According to its wording, Article 71(1) EUTMR refers therefore to the question of which powers that board has after having found that an action before it was well founded.

101 However, it follows from the regulatory context of Article 71(1) EUTMR that, in proceedings before the Board of Appeal of the EUIPO, the provisions governing proceedings before the units and divisions of the EUIPO apply (see paragraph 96 above) and that that board is thus required to examine whether a new decision with the same operative part as the decision under appeal before it may be lawfully adopted at the time of the appeal ruling. Therefore, the case-law referred to in paragraph 98 above must be read in the light of the regulatory context of Article 71(1) EUTMR. It cannot therefore be deduced from that case-law that Article 93(3) of Regulation No 1907/2006, which is in a different regulatory context, must be interpreted as determining in itself the scope of the review which must be conducted by the Board of Appeal of the ECHA in the context of the examination of the merits of an action before it.

102 Finally, it should be noted that the nature of the tasks of the EUIPO and of the decisions of that Office is not comparable to that of the tasks and decisions of the ECHA. As is apparent from recital 27 EUTMR, it is for the EUIPO to take administrative implementation measures at Union level that trade mark law requires for each trade mark. As can be deduced from recitals 40 and 41 of that regulation, those implementation measures imply, in particular, that the EUIPO decides on applications for registration of a European Union trade mark and on cases initiated by third parties to oppose such registration or have it cancelled. As regards the ECHA, it is required, according to recital 15 of Regulation No 1907/2006, to centrally ensure effective management of the technical, administrative and scientific aspects of the system of protection of human health and the environment established by that regulation against risks connected with the manufacture, distribution and use of chemical substances. In particular, it results from recitals 16 to 21 of that regulation that one of the core principles of that system, which is to be implemented by the ECHA, is the obligation for producers and importers of chemical substances to provide all the relevant and available information on the dangers posed by those substances and to promote appropriate risk management measures. It is in the context of those obligations that decisions requesting further information adopted by the ECHA should be considered.

103 In the light of those differences, adequate legal protection against such decisions is not necessarily ensured by making the review thereof by the Board of Appeal of the ECHA subject to the requirements applicable to the review conducted by the Boards of Appeal of the EUIPO. As can be deduced from recital 42 EUTMR, in order to guarantee effective and efficient treatment of applications and disputes to be ruled on by the EUIPO, it can be justified to consider that it is for the Boards of Appeal of that office to re-examine, on their merits, those applications and disputes, substituting, in that regard, the first instance of the EUIPO. By contrast, where an administrative decision imposes obligations on individuals, such as a decision of the ECHA based on Article 46(1) and Article 52 of Regulation No 1907/2006, read in conjunction with Article 51(2) to (8) of that regulation, the legal protection of those individuals vis-à-vis that decision does not justify such a substitution, but merely requires that the Board of Appeal verify whether the decision at issue is vitiated by an error.

104 In the second place, it is necessary to reject the applicant’s argument alleging that, under Article 76(1)(h) of Regulation No 1907/2006, the Board of Appeal is an integral part of the ECHA. As is set out in paragraphs 59 to 86 above, the fact that that board is a body of the ECHA and not a body separate from that agency cannot, in itself, prejudge the nature and scope of the examination it is to conduct, regardless of the provisions defining the competences of that body and the rules of procedure applicable to it, of the nature of decisions subject to its review and the objectives of legal protection which it upholds.

Necessarily, the summary of the EUIPO’s Boards of Appeal proceedings could not cover all the various details of the proceedings. However, the affirmation in paragraph 94 in fine that the extent of the examination which the Board of Appeal must conduct in respect of the decision under appeal is not, in principle, determined by the grounds relied on by the appellant and does not cover all the various situations, as defined in the case-law. The same observations apply as for the ‘Mouldpro’ judgment analysed above (14/02/2019, T‑796/17, MOULDPRO, EU:T:2019:88).

Aim and Application of Article 27(2) EUTMDR

The aim of Article 27(2) EUTMDR is to limit the examination of the appeal to the scope given to the appeal by the parties, within the statement of grounds or the cross-appeal. The parties are the masters of the proceedings relating to relative grounds for refusal. Article 27(2) EUTMDR illustrates the general rule that the Office is restricted to the relief sought in the appeal and the statement of grounds (see above, point e).
The obligation to file written grounds for the appeal exists to define on which grounds the Boards will be required to examine whether a new decision with the same operative part as the decision under appeal before it may be lawfully adopted at the time of the appeal ruling. Those grounds may include arguments that the first instance committed an error or arguments according to which facts or the legal situation may have changed and the result must be different, even though the decision was perhaps correct when it was taken. Contrary to the General Court in Article 188 RP-GC, the Boards of Appeal are not limited to the contested decision being the subject matter of the appeal.
Article 27(2) EUTMDR does not deal with the decision-taking competency of the Boards of Appeal in comparison to the first instance. The case-law shows that the discretion to opt between a range of possibilities in Article 71(1) EUTMR is fundamental for the Boards of Appeal. Accordingly, Article 27(2) EUTMDR does not constitute a provision contrary to Article 71(1) EUTMR, with the result that the Board of Appeal is not entitled to carry out a new, full examination of the merits of the opposition, in terms of both law and fact, in line with its discretion to choose the ground that best fits the case.
As results from the wording that the examination of the appeal shall be restricted to the grounds invoked in the statement of grounds, and the examination of the cross-appeal to the grounds of the cross-appeal, it becomes clear that its application is mainly limited to the situation that the Board of Appeal exercises its discretion to merely decide on the appeal, not to the situation that the Board decides to exercise any power within the competence of the department which was responsible for the decision appealed.
It results from the wording of Article 71(1) EUTMR that the Board has therefore a broad choice of options for its decision, depending on the examination of the facts and evidence filed in support of the opposition:

(a) It may either decide as an appeal instance, annulling the decision on a point that justifies the annulment of the decision and remit the case back to the first instance that is then bound by that decision. To the extent the Board decides to act as an appeal body and to remit the case to the first instance, that department shall be bound to the ratio decidendi of the Board of Appeal’s decision, to the extent that the facts are the same (28/02/2018, C‑418/16P, mobile.de, EU:C:2018:128, § 101).

(b) The Board may also examine the opposition within the competence of the Opposition Division or as the case may be any other first-instance department and take accordingly a decision, annulling the contested decision and rejecting the application or the opposition, or on the other hand rejecting the appeal, having the impact that the contested decision remains applicable.

To the extent that the Board decides to exercise any power within the competence of the first instance, it needs to apply all the relevant norms of the first-instance proceedings, including procedural provisions. The application of the first-instance provisions is inherent to Article 71(1) EUTMR and may also be found in Article 48 EUTMDR. This covers in the first place the central Article 95 EUTMR, and all the other more specific provisions.
To the extent that the Board opts to merely decide on the appeal, it may only decide on:

the limitations to ‘the grounds invoked in the statement of grounds’, and, as the case may be to the grounds invoked in the cross-appeal;
unless it needs to examine ‘matters of law’ on its own initiative, namely for essential procedural requirements or a correct application of the EUTMR.

The expression ‘restricted to the grounds invoked in the statement of grounds’ pursuant to Article 27(2) EUTMDR refers to all the options the appellant or the cross-appellant may have to limit the examination of the appeal in the statement of grounds. In the present case, the applicant has challenged the contested decision regarding the fact that there is no likelihood of confusion between the trade mark applied for, for all the goods, and the earlier UK mark. It could have limited its statement of grounds to some goods only but did not do so. If it had, the Board would have been restricted to the goods on which the appellant had concentrated its grounds and on which the annulment of the contested decision was requested, which may be less than indicated in the notice of the appeal (01/03/, R 77/2020-1, FIMA / Fima (fig.) et al. § 17).
If however, the Board opts to exercise any power within the competence of the Opposition Division, it may do so within the scope of the provisions that frame the proceedings before the first instance.
In particular, the Board may decide under Article 71(1) EUTMR to take the most efficient way to refuse the application, by choosing the earlier trade mark or the legal basis invoked by the opponent, without deciding as an appeal instance, on the earlier right and the legal basis on which the contested decision relied. In such a case, a decision on the earlier UK mark, following the statement of grounds, would be redundant. Similarly, it may take the most efficient way to refuse the opposition, without examining all the conditions of the claim.
Only in this situation would the Board not need to decide on the appeal, as an appeal instance.
It may also decide to act purely as a review instance on appeal, annulling the decision to the extent it found a likelihood of confusion with the earlier UK mark, and then opt to remit the case to the Opposition Division.
It may further decide to annul the contested decision based on the UK mark as an appeal instance and then continue with the examination of some or all the earlier rights and legal basis that have not yet been examined, in the shoes of the first instance (see above, 24/11/2015, T‑278/10 RENV, WESTERN GOLD / WeserGold et al., EU:C:2015:876).
To the extent that the Board opts to decide on the appeal first, as an appeal instance, it also must examine certain matters of law, not raised by the parties. This criterion has been defined by the case-law in the ‘Hooligan’ judgment (01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, see above). In the present case, for example, the Board must examine the validity of the earlier trade mark chosen in the contested decision and also the contested decision, following the withdrawal of the UK from the European Union, as a matter of law.

Criteria to exercise the discretion in Article 71(1) EUTMDR

Thus, the relevant criteria on how to exercise the discretion under Article 71(1) EUTMR remains. As no specific criteria are set or general rules laid down, the discretional power conferred on the Boards of Appeal by Article 71(1) EUTMR is exercised on a case-by-case basis.
Recital 30 EUTMR highlights that the appeal proceedings should ensure that parties who are affected by decisions made by the Office are protected by the law in a manner which is suited to the special character of trade mark law.
Trade mark law has the particularity that it is often a complex mixture of the factual and legal assessment of a number of earlier rights.
Moreover, Recital 8 EUTMDR stresses that it should allow for an effective, efficient and, within the scope of the appeal defined by the parties, complete review of decisions taken by the Office in the first instance by means of a transparent, thorough, fair and impartial appeal procedure suited to the specific nature of intellectual property law.
If the Regulation foresaw that an EUIPO Board of Appeal should only decide on the appeal as a review body, that means following a first-instance decision on that topic, proceedings could frequently turn into endless ping-pong situations. It would not be an efficient way to deal with the proceedings, as it would oblige the Boards to take decisions on points that are not decisive for the result.
One of the most important criteria that may affect a decision on the appeal to rather remit the case to the first instance is the complete assessment of the facts. This may aid marks whose use could later successfully be challenged by means of annulment or infringement proceedings are not registered. Reasons of legal certainty and sound administration speak in favour of that approach (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 59; 13/03/2007, C‑29/05 P, ARCOL / CAPOL, EU:C:2007:162, § 48).
It is particularly appropriate to remit a case to the first instance if the remaining issues have not yet been dealt with properly by the Office, and may involve the examination of facts, evidence and arguments for the first time.
This results from the institutional framework. The parties before the General Court may not change the subject matter of the proceedings before the Boards of Appeal and therefore, the General Court is only called upon to assess the legality of the decisions of the Boards of Appeal by reviewing the application of the law made by that Board of Appeal, in light of facts which were submitted in both instances (18/07/2006, C‑214/05 P, Sissi Rossi, EU:C:2006:494, § 50). By contrast, the General Court cannot carry out such a review by considering matters of fact newly produced before it.
If the Boards of Appeal were to decide on facts and legal issues that had not yet been examined by the first instance, it would deprive the parties of one instance, in particular to bring forward supplementary facts, evidence or arguments.
On the other hand, Article 71(1) EUTMR also allows the Boards to decide within the competencies of the first instance. The main ground for a Board of Appeal to take a decision itself is the economy of proceedings. It is consistent with the principle of sound administration and the need to ensure the proper conduct and effectiveness of proceedings that not all cases are remitted to the first instance.
It may be that the Opposition Division had not taken the strongest case first or the facts of the strongest case have later changed. As results from the ‘MGM’ judgment (16/09/2004, T‑342/02, Moser Grupo Media / MGM, EU:T:2004) see above, the parties do not have the right to obtain a decision on all the grounds involved. The Board is then requested to take the most efficient path in relation to the opposition.
Therefore, for the sake of completeness, it is observed that the Board could have chosen, from the very beginning, to decide on an earlier right other than the UK mark on which the Opposition Division based its decision, if the opposition based on that other earlier mark were to have been successful.
However, in view of the exhaustive discussion regarding all the earlier rights and the focus on the United Kingdom which is the same for all the earlier marks, is it appropriate not to remit the case to the Opposition Division but to decide on all the earlier grounds.

Right to be heard

There is need to hear the parties about the further grounds of opposition, as the opponent and the applicant had the possibility before the Opposition Division, to comment on the likelihood of confusion with the EUTM, in the normal course of the opposition procedure. It is not necessary, for that reason, to hear the parties again in the application of Article 94(1) EUTMR before taking a decision, (22/03/2007, T-215/03, Vips, EU:T:2007:93; 25/03/2009, T‑191/07, Budweiser, EU:T:2009:83, 15/01/2013, T‑237/11, Bellram / RAM, EU:T:2013:11; 24/11/2015, T‑278/10 RENV, WESTERN GOLD / WeserGold et al., EU:C:2015:876; 09/12/2014, T‑176/13, Generia, EU:T:2014:1028).
Nor does it appear to be necessary to invite the parties to file further observations, following the change of the earlier trade mark, in the present circumstances of the appeal (Article 70(2) EUTMR).
In addition, the opponent has put forward specific arguments about the other earlier trade marks following Brexit, when discussing the impact of the withdrawal of the UK on the present opposition (see above, at paragraph 9).

Earlier UK trade mark No 2 379 939

With respect to the other earlier UK mark, the same applies as to the first UK mark, in the sense that it can no longer be a ground for the opposition. There is no need to remit the case back to the first instance.

Earlier figurative EUTM No 14 902 787

As the earlier figurative mark has not yet been examined and as there are no major new factual issues, it is appropriate to examine it at Board of Appeal level, for reasons of procedural economy.

Article 8(1)(b) EUTMR

Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
Pursuant to Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 42).

Relevant public

The earlier mark is an EUTM registration. Therefore, the relevant public is that within the European Union, within the borders after the 31 December 2020.
Indeed, it must be recalled that where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it follows from the unitary character of the EU trade mark laid down in Article 1(2) EUTMR that an earlier EU trade mark is protected in the same way in all Member States, and may therefore be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of the consumers of part of the Union. It follows that the principle laid down in Article 1(2) EUTMR, according to which it suffices, in order for registration of a trade mark to be refused, that an absolute ground for refusal exists only in part of the European Union, also applies by analogy to a relative ground for refusal under Article 8(1)(b) EUTMR thereof (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 76 and the case-law cited).
The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for that were found to be identical or similar (24/05/2011, T-408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited; 01/07/2008, T-328/05, Quartz, EU:T:2008:238, § 23, confirmed by 10/07/2009, C-416/08 P, Quartz, EU:C:2009:450). Furthermore, the relevant public is identified by means of the nature of the goods and services covered by the conflicting marks.
The perception of trade marks in the mind of the average consumer of the type of goods in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 16/07/1998, C‑210/96, Gut Springenheide, EU:C:1998:369, § 31).
Part of the goods at issue, namely ‘jewellery’, or ‘precious metals and their alloys and goods in precious metals or coated therewith; precious and semi-precious stones; chorological and chronometric instruments’ are aimed both at public at large and at professionals such as artisan jewellers, jewellery retailers and, insofar as such goods are often sold as complementary goods, also clothing designers and retailers. Such consumers are considered to have a high level of attention for these goods, in light, in particular, of the fact that the goods in question generally tend to be expensive (12/01/2006, T‑147/03, Quantum, EU:T:2006:10, § 63).
However, the opponent rightly points it out that certain jewellery items such as ‘watches, clocks, cufflinks, tie pins, key rings and trinkets’ can also be produced and sold in rather cheap variations. For these goods the end consumer’s level of attention does not necessarily need to be high. However, as such goods are purchased to embellish the appearance of the human body, the end consumer will pay a reasonable degree of attention when selecting and purchasing these goods, which will vary according to their quality, price, trade mark and company origin (11/09/2013, R 911/2012-1, M (fig.) / dm, § 15).
Where the relevant public is made up of consumers who are part of the public at large and professionals, the group with the lowest level of attention must be taken into account (15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 25; see also, 19/04/2013, T-537/11, Snickers, EU:T:2013:207, § 27 and the case-law cited).

Comparison of the goods

The contested goods which are at issue in the present appeal:

Class 14 – Jewellery; Chronoscopes;

are identical to

Class 14 – Chronological and chronometric instruments, jewellery

of the earlier mark in the same class.

In addition

Class 14 - Cases for watches and clocks

are similar to

Class 14 – Watches and clocks of the earlier mark

for reasons of complementarity, as held by the contested decision.

The Opposition Division’s conclusions, regarding the identity or similarity between the goods in question, have not been challenged by the parties to the appeal and the Board does not see any reasons to diverge from the contested decision’s findings.

Comparison of the marks

The global appreciation of all factors relevant to the circumstances of the case must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) EUTMR – ‘there exists a likelihood of confusion on the part of the public’ – shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
It must also be found that the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details. However, this does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (13/05/2015, T‑102/14, TPG POST / DP et al., EU:T:2015:279, § 36; 12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 42).
The earlier sign is a figurative word mark , consisting of a one-word element, ‘JOULES’. The calligraphy used for the earlier mark also makes it more distinctive and makes the letters ‘o’ and ‘u’ difficult to read.
The Opposition Division held that ‘Joules’ was a male first name. This was not supported by any evidence. It is not well-known that ‘Joules’ is a first name. In particular, Julius or Julia are not commonly abbreviated or modified by adding the letter ‘o’. On the other hand, ‘Joules’ is known as the plural version of the internationally recognised basic unit for energy, named after the British physician James Prescott Joule. The relevant public would recognise this prior meaning rather than seeing it as a male first name, since it is part of an elementary education in physics and general knowledge in the food sector, where the value of energy generally is referred to by ‘joules’.
This is also confirmed by the dictionary definitions, as for example the Collins Dictionary:

‘joule’: a unit of measurement of work or energy (source: https://www.collinsdictionary.com/dictionary/english/joule)

or the Oxford English Dictionary:

‘an electrical unit, being the amount of work done (or of heat generated) by a current of one ampère acting for one second against a resistance of one ohm. (source: http://www.oed.com/view/Entry/101723?redirectedFrom=joules#eid).

The fact the ‘joules’ is the plural version of the internationally recognised basic unit of energy will not be altered by the fact that ‘Joules’ is also the surname of the opponent’s founder, ‘Tom Joules’, but it is unlikely that the relevant public would recognise this meaning. At most, it may understand ‘Joules’ as a surname that coincides with the reference to the unit of measurement.
As a rule, first names of persons in isolation are not used to identify persons on a broader scale in commerce and are therefore less distinctive than surnames.
The contested sign is a figurative mark, consisting of two slightly stylised word elements ‘ ’, also written in upper-case letters and a centrally positioned, stylised heart-shaped ampersand. ‘JULES’ is a French form of the masculine name ‘Julius’, but can be a female name, the nickname ‘Julie’ as well. A notable bearer of this name was the French novelist Jules Verne (1828-1905), ‘GENTS’ is the abbreviated form of ‘gentlemen’s’, and is used in the context of men’s products or services related to men, such as in informal language ‘a men's public lavatory’ (source: https://www.collinsdictionary.com/dictionary/english/gents), or changing rooms.
It must be recalled that, according to the applicable case-law, in the event that a trade mark consists of verbal and figurative elements, the verbal elements should, in principle, be considered more distinctive than colouring or stylisation. Account must be taken of the fact that, in general terms, the relevant public does not usually analyse the signs and will more easily refer to the signs in question by their verbal element, rather than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; 15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 45; 06/09/2013, T-599/10, Eurocool, EU:T:2013:399, § 111; 28/03/2017, T-538/15, REGENT UNIVERSITY, EU:T:2017:226, § 51).
Visually, there is at most a low degree of similarity because of the coincidence in the initial letter ‘J-’ and the common ending ‘-ULES’, but the contested mark differs in not having in the additional ‘O’ letter as in the earlier sign , the centrally positioned, stylised heart-shaped ampersand and the second word element ‘GENTS’, all without counterparts in the earlier sign. Because of its size, central position and particular stylisation, this ampersand-heart element plays an important role in the sign. The trade mark applied for must be considered as a whole.
Aurally, the relevant public will notice the phonetic differences between the signs caused by the markedly recognised unit of energy ‘dʒuːlz’ (‘dʒuǝlz’) and the presence of the second word element ’GENTS’ in the contested sign. Due to its the central position and recognisable size, the ampersand symbol will be pronounced as ‘and’. There is no reason to believe that the expression will be shortened to ‘Jules’. Even between ‘JOULES’ and ‘JULES’ the pronunciation of the signs differs. Taking all the above into account, the phonetic similarity between the signs is at most low.
Two signs are identical or similar conceptually when they are perceived as having the same or analogous semantic content (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24). In the present case, the relevant public will recognise the meaning of ‘JOULES’ in the earlier sign as the reference to a unit of measurement or, at most, a surname of French origin, and will also understand the elements in the contested sign as a first name and a reference to ‘gentlemen’s’. Therefore, the signs are conceptually dissimilar.
Consequently, the conflicting signs are visually and aurally similar, at most, to a low degree and dissimilar conceptually.

Distinctive character

In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods for which it has been registered as coming from a particular undertaking too identify the goods for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, 22-23).
The opponent alleges that it enjoys a certain reputation in the United Kingdom. Following Brexit, such reputation has lost its relevance. The evidence submitted by the opponent is not particularly exhaustive, it shows at most that the earlier mark enjoys a certain degree of use in the UK, which could eventually lead to the conclusion that the earlier trade mark enjoys a certain degree of reputation in this country. However, due to the fact that the UK is not part of the EU, the reputation and distinctiveness it may have acquired through use in this country is no longer relevant for the present case.
Furthermore, some evidence shows use in other countries, in particular in exhibits CP5 and CP6 submitted by the opponent. It can be seen that apart from the earlier mark , the sign ‘Tom Joule’ is often repeated, which, although it uses the same calligraphy as the earlier mark, differs in important elements, by adding the forename ‘Tom’ and omitting the final letter ‘s’, to read as ‘Tom Joule’.
Consequently, the assessment of the distinctive character of the earlier mark will rest on its distinctiveness per se. As the contested decisions stated the earlier mark has no meaning for the goods and services and, therefore, the distinctiveness of the earlier mark must be seen as normal.

Overall assessment of the likelihood of confusion

The likelihood of confusion is constituted by the risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. The appreciation of the likelihood of confusion on the part of the public depends on numerous elements, including the association which can be made with the registered trade mark, the degree of similarity between the trade mark and the sign and between the goods and services identified; it must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16, 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-18).
The process of an overall assessment includes an evaluation of the interdependence between, in particular, the similarity of the marks and the goods and services in conflict. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 17/10/2017, R 124/2017-2, CLOUD 66 (fig.) / CLOUD 66 (fig.) et al., § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).
When the goods covered by the marks at issue are identical, the degree of difference between the signs must be sufficiently high to exclude a likelihood of confusion (13/11/2012, T-555/11, tesa TACK, EU: T:2012:594, § 53). This applies to the case at hand. The goods at issue in the present appeal proceedings were found to be identical to the opponent’s earlier goods.
However, despite the goods and services being identical, even in the context of imperfect recollection, a likelihood of confusion is not likely to occur. The level of similarity between the signs is simply too low.
When viewed as a whole, the marks differ significantly, particularly, in their visual structure, calligraphy and the combination of their respective elements, in particular taking into account the difference in their eye-catching, dominant elements. Indeed, the signs and do not share many elements except for the letters ‘J’ and ‘ULES’. To the contrary, the contested sign has a stylised heart-shaped ampersand, which plays an important role in the consumer’s perception of the mark, as well as another word element.
The marks differ significantly in their compositions, in their figurative elements, as well as the calligraphy chosen and consequently in the overall impressions they are likely to make on the relevant public.
Having regard to the interdependence principle, considering that the level of attention displayed by the relevant public will be high for some of the contested goods, the differences presented by the marks in their distinctive elements are sufficient to offset any aural, visual and conceptual similarities, despite the identity between the goods covered by those marks.

International Registration No 876 494 designating the European Union ‘JOULES’

For the same reasons, it is appropriate to examine the earlier EUTM ‘JOULES’ at the Board of Appeal level.

Article 8(1)(b) EUTMR

Relevant public and degree of attention.

As mentioned above, part of the goods at issue, namely ‘jewellery’ aimed both at public at large and at professionals such as artisan jewellers, jewellery retailers and, insofar as such goods are often sold as complementary goods, also clothing designers and retailers. Such consumers are considered to have a high level of attention for these goods, in light, in particular, of the fact that the goods in question tend generally to be expensive (12/01/2006, T‑147/03, Quantum, EU:T:2006:10, § 63).
On the other hand, certain jewellery items such as ‘watches, clocks, cufflinks, tie pins, key rings and trinkets’ can also be produced and sold in rather cheap variations. For these goods the end consumer’s attention does not necessarily need to be high. However, as such goods are purchased to embellish the appearance of the human body, the end consumer will pay a reasonable degree of attention when selecting and purchasing these goods, which will vary according to their quality, price, trade mark and company origin (11/09/2013, R 911/2012-1, M (fig.) / dm, § 15).
With respect to the contested goods in Classes 18 and 25, they are directed at the public at large who will display an average degree of attentiveness (20/06/2018, T-657/17, HPC POLO / POLO et al., EU:T:2018:358, § 21; 07/10/2015, T‑365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 29; 06/12/2016, T-735/15, SHOP ART (fig.) / *art (fig.) et al., EU:T:2016:704, § 23).
Since the earlier right is an international registration designating the European Union, the relevant territory for the assessment of the likelihood of confusion is the EU.

Comparison of the goods and services

In assessing the similarity of goods and services, all the relevant factors pertaining to the relationship between those goods and services should be taken into account. Those factors include their nature, their purpose and method of use, and whether they are in competition with, or complementary to, each other (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, their distribution channels (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38).
The contested good which are at issue in the present appeal are:

Class 14 – Jewellery; Chronoscopes; Cases for watches and clocks.

The goods and services of the earlier mark ‘JOULES’ are:

Class 25 – Clothing, footwear and headgear; hats and hat frames; caps; outerclothing and overcoats; swimwear; underwear;

Regarding the opponent’s goods and services, namely the opponent’s goods in Classes 18 and 25, their natures, purposes and methods of use are different to:

Jewellery; Chronoscopes; Cases for watches and clocks.

They do not have the same usual origins, distribution channels and are neither in competition nor complementary. Therefore, the goods and services are dissimilar.

The same is true for the services in Class 35, which do not refer to the same goods, but rather refer to articles of clothing.
As the goods are dissimilar, any likelihood of confusion is excluded.
Even if they were to be considered similar to a low degree, the result would not differ.
As held before, the trade marks ‘Joules’ and are at most similar to a low degree. They differ in their pronunciation, their visual impression and their conceptual meaning, as a well-known surname and a popular first name.
Considering the very low level of visual and aural similarities between the signs and ‘JOULES’, due to the difference in the additional letter ‘O’ in the earlier mark ‘JOULES’, the centrally-positioned, stylised heart-shaped ampersand and the second word element ‘GENTS’, as well as the average level of attention of the relevant public and the dissimilarity or at most the low degree of similarity between the goods and services, a likelihood of confusion does not exist.

Article 8(5) EUTMR

The earlier marks are also invoked on the grounds of Article 8(5) EUMTR.
The application of Article 8(5) EUTMR is subject to the following cumulative conditions: first, that the earlier mark is identical or similar to the contested mark; secondly, that the earlier mark has a reputation in the territory in which it is registered; thirdly, that there is a risk that the use of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; and fourthly, that the use of the younger mark would be without due cause. These conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 30).
According to Article 8(5) EUTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: The earlier mark must have a reputation in the territory where it is registered. In the present case, since they are EUTMs, the relevant territory to take into account is EU.
However, as mentioned above, all the relevant facts and evidence are limited to the United Kingdom, which is no longer part of the EU. Therefore, all the evidence submitted by the opponent regarding reputation cannot be taken into account. Consequently, the second condition mentioned in the previous paragraph has not been fulfilled. The opposition on the grounds of Article 8(5) EUTMR already fails for this reason.
As a result, the contested decision must be annulled, and the opposition is rejected.

Costs

Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.
As to the appeal proceedings, these consist of the appeal fee of EUR 720 and the applicant’s costs of professional representation of EUR 550. As to the opposition proceedings, the opponent must reimburse the applicant’s cost of professional representation of EUR 300. The total amount is fixed at EUR 1 570.

Summary of the facts. 2

Earlier rights 2

Earlier United Kingdom trade mark registration No 2 526 463 ‘JOULES’ 6

Similarity of the goods 6

Relevant public 6

Similarity of the signs 6

Other earlier signs 7

Submissions and arguments of the parties 8

Reasons 9

Earlier United Kingdom trade mark registration No 2 526 463 9

Other earlier trade marks 10

a) Obligation to examine further marks 10

b) Competency of the Boards of Appeal – legal provisions 10

c) Ambiguity in the wording of Article 27(2) EUTMDR 13

d) Article 27 EUTMDR and its legal basis Article 73(a) EUTMR 16

e) Appeal proceedings in the basic Regulation, in particular Articles 95, 68, 70 and 71 EUTMR 16

f) ‘Functional continuity’ in absolute grounds procedure, options and obligations of the Boards of Appeal 17

g) ‘Functional continuity’ in relative grounds procedure, options and obligations of the Boards of Appeal, 19

h) CJEU: Options and obligations of the Boards of Appeal, late evidence 22

i) Scope of the appeal and rights of defence of the winning party 27

j) Changing the grounds of the decision by the Boards of Appeal and the rights of defence 30

k) Scope of examination by the Boards of Appeal: normal or enhanced distinctiveness 40

l) Violation of the right of defence before the Opposition Division remedied before the Boards of Appeal 47

m) Limitations of the scope of examination by the Boards of Appeal: requests, statements of grounds, appellant is adversely affected 48

n) Limitations of the scope of appeal: request for proof of use before the Board 51

o) Limitations of the scope of appeal: does not include proof of use 53

p) Limitations of the scope of appeal: Other grounds not to be examined 59

q) Comparison within the institutional context 62

r) Aim and Application of Article 27(2) EUTMDR 65

s) Criteria to exercise the discretion in Article 71(1) EUTMDR 67

Right to be heard 68

Earlier UK trade mark No 2 379 939 69

Earlier figurative EUTM No 14 902 787 69

Article 8(1)(b) EUTMR 69

Relevant public 69

Comparison of the goods 70

Comparison of the marks 71

Distinctive character 73

Overall assessment of the likelihood of confusion 74

International Registration No 876 494 designating the European Union ‘JOULES’ 75

Article 8(1)(b) EUTMR 75

Relevant public and degree of attention. 75

Comparison of the goods and services 76

Article 8(5) EUTMR 77

Costs 77

Order 80

Order

On those grounds,

THE BOARD

hereby:

Annuls the contested decision;
Rejects the opposition in its entirety;
Orders the opponent to bear the applicant’s costs in the opposition and appeal proceedings to a total amount of EUR 1 570.

Signed

G. Humphreys

Signed

Ph. von Kapff

Signed

A. Kralik

Registrar:

Signed

H. Dijkema

1 EUROPEAN COMMISSION Brussels, 18.5.2017 C(2017) 3212 final

2 Rule 48(1) CTMIR applicable at that time read as follows: ‘The notice of appeal shall contain … (c) a statement identifying the decision which is contested and the extent to which amendment of cancellation of the decision is requested.’ The provision has now been replaced by Article 21 EUTMDR: ‘(1) A notice of appeal filed in accordance with Article 68 EUTMR shall contain the following: … (e) where the decision subject to appeal is only contested in part, clear and unambiguous identification of the goods or services in respect of which the decision subject to appeal is contested.’ And Article 22 EUTMDR: ‘(1) A statement setting out the grounds of appeal filed pursuant to the fourth sentence of Article 68 EUTMR shall contain a clear and unambiguous identification of the following: … (b) the grounds of appeal on which the annulment of the contested decision is requested within the extent identified in accordance with Article 21(1)(e) EUTMDR.’

3 ‘Article 188 Subject-matter of the proceedings before the General Court

The pleadings lodged by the parties in proceedings before the General Court may not change the subject-matter of the proceedings before the Board of Appeal.’

4 Article 134 RP-GC before the reform: … 3. An intervener, as referred to in paragraph 1, may, in his response lodged in accordance with Article 135(1), seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application and put forward pleas in law not raised in the application. Such submissions seeking orders or putting forward pleas in law in the intervener’s response shall cease to have effect should the applicant discontinue the proceedings.

The corresponding provision in the RP-GC reads today as follows: Article 184 of order sought, pleas in law and arguments contained in the cross-claim

1. The cross-claim shall seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application.

2. The pleas in law and arguments relied on shall identify precisely the points in the grounds of the decision being challenged that are contested.

5 Text of those articles reproduced in paragraphs 32 and 33 of the judgment below. The provisions are replaced by Article 28 EUTMDR.

15/03/2021, R 1123/2018-1, JULES GENTS (fig.) / Joules et al.

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Summary of the facts.

Earlier rights

Earlier United Kingdom trade mark registration No 2 526 463 ‘JOULES’

Similarity of the goods

Relevant public

Similarity of the signs

Other earlier signs

Submissions and arguments of the parties

Reasons

Earlier United Kingdom trade mark registration No 2 526 463

Other earlier trade marks

Obligation to examine further marks

Competency of the Boards of Appeal – legal provisions

Ambiguity in the wording of Article 27(2) EUTMDR

Article 27 EUTMDR and its legal basis Article 73(a) EUTMR

Appeal proceedings in the basic Regulation, in particular Articles 95, 68, 70 and 71 EUTMR

‘Functional continuity’ in absolute grounds procedure, options and obligations of the Boards of Appeal

‘Functional continuity’ in relative grounds procedure, options and obligations of the Boards of Appeal,

CJEU: Options and obligations of the Boards of Appeal, late evidence

Scope of the appeal and rights of defence of the winning party

Changing the grounds of the decision by the Boards of Appeal and the rights of defence

Scope of examination by the Boards of Appeal: normal or enhanced distinctiveness

Violation of the right of defence before the Opposition Division remedied before the Boards of Appeal

Limitations of the scope of examination by the Boards of Appeal: requests, statements of grounds, appellant is adversely affected

Limitations of the scope of appeal: request for proof of use before the Board

Limitations of the scope of appeal: does not include proof of use

Limitations of the scope of appeal: Other grounds not to be examined

Comparison within the institutional context

Aim and Application of Article 27(2) EUTMDR

Criteria to exercise the discretion in Article 71(1) EUTMDR

Right to be heard

Earlier UK trade mark No 2 379 939

Earlier figurative EUTM No 14 902 787

Article 8(1)(b) EUTMR

Relevant public

Comparison of the goods

Comparison of the marks

Distinctive character

Overall assessment of the likelihood of confusion

International Registration No 876 494 designating the European Union ‘JOULES’

Article 8(1)(b) EUTMR

Relevant public and degree of attention.

Comparison of the goods and services

Article 8(5) EUTMR

Costs

Table of Contents

Order

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