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URL: http://www.bailii.org/eu/cases/EUECJ/2014/C28513_CO.html
Cite as: [2014] EUECJ C-285/13_CO

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ORDER OF THE COURT (Seventh Chamber)

12 June 2014 (*)

(Appeal - Article 181 of the Rules of Procedure of the Court of Justice - Community trade mark - Regulation (EC) No 40/94 - Article 8 - Application for Community figurative mark Caffè KIMBO - Opposition proceedings - Earlier national word mark BIMBO - Well-known mark - Partial rejection of the opposition - Appeal manifestly inadmissible)

In Case C-285/13 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 20 May 2013,

Bimbo SA, established in Barcelona (Spain), represented by N. Fernández Fernández-Pacheco, abogado,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

Café do Brasil SpA, established in Melito di Napoli (Italy), represented by M. Mostardini and F. Mellucci, avvocati,

intervener at first instance,

THE COURT (Seventh Chamber),

composed of J.L. da Cruz Vilaça, President of the Chamber, G. Arestis (Rapporteur) and A. Arabadjiev, Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1        By its appeal, Bimbo SA (‘Bimbo’) seeks to have set aside the judgment of the General Court of the European Union in Case T-277/12 Bimbo v OHIM - Café do Brasil (Caffè KIMBO) EU:T:2013:146 (‘the judgment under appeal’), by which the General Court dismissed its action seeking annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 15 May 2012 (Case R 1017/2011-4) relating to opposition proceedings between Bimbo and Café do Brasil SpA (‘the contested decision’).

 Legal context

2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). The latter regulation entered into force on 13 April 2009.

3        Article 8 of Regulation No 40/94 provided:

‘1.       Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

(b)      if because of its identity with, or similarity to, the 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.

2.      For the purposes of paragraph 1, “earlier trade marks” means:

…

(c)      trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words “well known” are used in Article 6 bis of the Paris Convention [for the Protection of Industrial Property, signed in Paris on 20 March 1883, last revised in Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaty Series, Vol. 828, No 11851, p. 305)].

…

4.      Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:

(a)      rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b)      that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

5.      Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

4        Rule 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4) (‘the Implementing Regulation’), provides:

‘1.      [OHIM] shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time-limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).

2.      Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:

(a)      if the opposition is based on a trade mark which is not a Community trade mark, evidence of its filing or registration, by submitting:

…

(ii)      if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time-limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered;

…’

 Background to the dispute

5        The background to the dispute was set out as follows by the General Court in paragraphs 1 to 11 of the judgment under appeal:

‘1.      On 30 October 2003, the intervener [at first instance], Café do Brasil SpA, filed an application for registration of a Community trade mark at [OHIM] under Regulation [No 40/94].

2.      The trade mark for which registration was sought is the figurative sign reproduced below:

3.      The goods in respect of which registration was sought fall, inter alia, within Class 30 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended [“the Nice Agreement”], and correspond to the following description: “Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar sauces (condiments); relish; ice”.

4.      The Community trade mark application was published in Community Trade Marks Bulletin No 45/2004 of 8 November 2004.

5.       On 3 February 2005, [Bimbo] filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6.      The opposition was based on the Spanish word mark BIMBO, registered under number 291655, applied for on 8 March 1955 and authorised on 4 October 1955, in respect of the goods “cereals, milling industry, baking, pastry and starch” in Class 30, reputation being claimed in Spain in respect of all of those goods, and on the earlier mark BIMBO, well known in Spain in respect of those same goods.

7.      The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009).

8.      On 14 March 2011, the Opposition Division upheld the opposition in respect of part of the goods at issue, namely “flour and preparations made from cereals, bread, pastry and confectionery, ices; yeast, baking-powder” in Class 30, on the basis of Article 8(1)(b) and Article 8(2)(c) of Regulation No 207/2009.

9.      On 12 May 2011, the intervener [at first instance] filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10.      By [the contested decision], the Fourth Board of Appeal of OHIM upheld that appeal in part and annulled the Opposition Division’s decision in so far as it rejected the Community trade mark application in respect of “flour, confectionery, ices, yeast and baking-powder” in Class 30. The Board of Appeal dismissed the appeal as to the remainder and thus confirmed the rejection of the Community trade mark application as regards “preparations made from cereals, bread, pastry”.

11.      In the contested decision, the Board of Appeal stated as follows:

-      first, the earlier Spanish trade mark No 291655 “BIMBO” must be disregarded since [Bimbo] has not proved the renewal of that registration within the time-limit set by OHIM to substantiate its opposition (contested decision, point 10);

-      second, the opposition must be examined on the basis of the earlier unregistered mark “BIMBO”, which is well known in Spain, and that, therefore, the only ground of opposition to be examined is Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(c) of that regulation (point 11);

-      third, the well-known character of the unregistered trade mark “BIMBO” has been substantiated in Spain, before the date of filing of the contested Community trade mark application, only in respect of “packaged sliced bread” (points 13 to 23 in reference to the items of evidence summarised on pages 4 and 5 of the Opposition Division’s decision);

-      fourth, the “preparations made from cereals, bread” and “pastry” in the trade mark application are identical or similar to the “packaged sliced bread” in respect of which the well-known character of the earlier mark “BIMBO” is established (points 27 and 28);

-      fifth, the “flour” and “yeast and baking-powder” in the trade mark application are dissimilar to [Bimbo]’s “packaged sliced bread” since, although the former are important ingredients of bread, they have a different nature, purpose and method of use (point 29);

-      sixth, the “confectionery” and “ices” in the trade mark application differ in nature, purpose and method of use from [Bimbo]’s “packaged sliced bread” (points 30 and 31);

-      seventh, the signs are similar overall (points 36 to 40);

-      eighth, there is a likelihood of confusion in respect of the goods in the trade mark application which are found similar to those for which the well-known character of the earlier mark was established, which has the effect that the opposition must be upheld in respect of “preparations made from cereals, bread, pastry” (point 45);

-      ninth, there is no likelihood of confusion in respect of goods which are dissimilar, that is, “flour, confectionery, ices, yeast and baking-powder” (point 46).’

 The procedure before the General Court and the judgment under appeal

6        By application lodged at the Registry of the General Court on 25 June 2012, Bimbo brought an action seeking, principally, the alteration of the contested decision or, in the alternative, its annulment.

7        In support of its action, Bimbo relied on two pleas in law, alleging, first, breach of Articles 64, 75 and 76 of Regulation No 207/2009 and, second, breach of Article 8(1)(b) of that regulation.

8        By the judgment under appeal, the General Court rejected both those pleas in law and dismissed the action in its entirety.

 Forms of order sought by the parties before the Court of Justice

9        Bimbo claims that the Court should:

-        principally, set aside the judgment under appeal and order the annulment of the registration of the Community figurative trade mark Caffè KIMBO for all goods in Class 30 of the Nice Agreement;

-        in the alternative, set aside the judgment under appeal and order the annulment of the registration of the Community figurative trade mark Caffè KIMBO for the following goods in Class 30 of the Nice Agreement: ‘flour, confectionery, ices, yeast and baking-powder’; and

-        order OHIM and Café do Brasil SpA to pay the costs.

10      OHIM and Café do Brasil SpA contend that the appeal should be dismissed and that Bimbo should be ordered to pay the costs.

 The appeal

11      Under Article 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part. That provision must be applied in the context of the present case.

12      At the outset, it should be noted that, in support of its appeal, Bimbo relies on two grounds alleging, first, breach of Rule 19 of the Implementing Regulation and, second, breach of Article 8(1), (2), (4) and (5) of Regulation No 207/2009.

13      Given, however, that, in the present case, the application for registration of the Community figurative trade mark Caffè KIMBO was filed on 30 October 2003 by Café do Brasil SpA and that that date is decisive for purposes of identifying the applicable substantive law, the present dispute remains governed by Regulation No 40/94 (see, to that effect, orders in Case C-14/12 P Shah v Three-N-Products Private EU:C:2013:349, paragraph 2, and in Case C-346/12 P DMK v OHIM EU:C:2013:397, paragraph 2).

 The first ground of appeal, alleging breach of Rule 19 of the Implementing Regulation

 Arguments of the parties

14      By its first ground of appeal, Bimbo claims that the General Court breached Rule 19 of the Implementing Regulation. In particular, Bimbo criticises the General Court for having examined the opposition to registration of the mark applied for solely on the basis of the earlier unregistered mark BIMBO, which is well known in Spain, and for not having taken into consideration the earlier Spanish mark BIMBO, registered under No 291655, even though Bimbo had proved the existence and validity of that latter mark, in accordance with that rule.

15      OHIM and Café do Brasil SpA take the view that this first ground of appeal must be rejected as being manifestly inadmissible.

 Findings of the Court

16      It follows from the Court’s settled case-law that to allow a party to put forward for the first time before the Court of Justice, in an appeal, a plea in law which it has not raised before the General Court would be to allow it to bring before the Court, the appellate jurisdiction of which is limited, a dispute of wider ambit than that which came before the General Court. In an appeal, the Court’s jurisdiction is, as a result, confined to reviewing the findings of law on the pleas argued before the General Court (see, to that effect, inter alia, Case C-408/08 P Lancôme v OHIM EU:C:2010:92, paragraph 53, and Case C-92/10 P Media-Saturn-Holding v OHIM EU:C:2011:15, paragraph 39).

17      It is clear, in the present case, that the alleged breach of Rule 19 of the Implementing Regulation put forward by Bimbo in support of its first ground of appeal and, in particular, the claim based on the assertion that Bimbo had proved the existence and validity of the earlier Spanish mark BIMBO registered under No 291655, in accordance with that rule, were never raised before the General Court. It must be stressed, in this regard, that Bimbo based its action before the General Court solely on the earlier unregistered mark BIMBO, which is well known in Spain.

18      Consequently, the first ground put forward by Bimbo in support of its appeal must be rejected as being manifestly inadmissible.

 The second ground of appeal, alleging breach of Article 8(1), (2), (4) and (5) of Regulation No 40/94

 Arguments of the parties

19      By the first part of its second ground of appeal, Bimbo claims that the General Court breached Article 8(1)(b) of Regulation No 40/94, read in conjunction with Article 8(2)(c) thereof. It contests, in essence, the General Court’s assessment concerning the comparison of the goods at issue and claims that those goods are identical or very similar, since all of them belong to the food industry sector. Bimbo claims, moreover, that the signs at issue are highly similar in visual and phonetic respects. It deduces from this that a more appropriate comparison of the goods concerned could have led to the conclusion that there was a high likelihood of confusion.

20      The second part of Bimbo’s second ground of appeal alleges breach of Article 8(4) of Regulation No 40/94.

21      By the third part of its second ground of appeal, Bimbo claims that the General Court breached Article 8(5) of Regulation No 40/94. Bimbo argues that the General Court, essentially, failed to take into account, when assessing the likelihood of confusion, the reputation of the earlier mark BIMBO in Spain, even though that reputation had been accepted in its judgment in Case T-357/11 Bimbo v OHIM - Grupo Bimbo (GRUPO BIMBO) EU:T:2012:696. Moreover, Bimbo claims that registration of the mark applied for by Café do Brasil SpA will allow the latter to take unfair advantage of the distinctive character or reputation of the earlier mark BIMBO or will be detrimental to that mark.

22      OHIM and Café do Brasil SpA consider that this second ground of appeal must be rejected as being manifestly inadmissible. In the alternative, Café do Brasil SpA argues that this ground of appeal must be rejected, in any event, as being unfounded in so far as it could be interpreted as calling into question the General Court’s findings concerning the application of Article 8(1) of Regulation No 40/94.

 Findings of the Court

23      With regard to the first part of the second ground of appeal, it must be borne in mind that, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal is limited to points of law. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law which are subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-104/00 P DKV v OHIM EU:C:2002:506, paragraph 22, and Case C-254/09 P Calvin Klein Trademark Trust v OHIM EU:C:2010:488, paragraph 49).

24      In this regard, it must be pointed out that the assessment of the comparison of the conflicting goods is factual in nature and is not, save where the facts or the evidence submitted in that context by the parties have been distorted, subject to review by the Court of Justice.

25      It is clear, in the present case, that, by the first part of the second ground put forward in support of its appeal, Bimbo is inviting the Court to substitute its own assessment of the facts for that of the General Court, with regard to the comparison of the goods at issue, without, moreover, either showing or even alleging that that assessment of the General Court is based on a distortion of the facts or the evidence. The first part of this second ground of appeal must therefore be rejected as being manifestly inadmissible.

26      As regards the second part of the second ground presented in support of the present appeal, alleging breach, by the General Court, of Article 8(4) of Regulation No 40/94, suffice it to point out that Bimbo did not put forward that argument before either the General Court or the Board of Appeal of OHIM. Consequently, in accordance with the Court’s settled case-law, cited at paragraph 16 of the present order, the second part of the ground of appeal must be rejected as being manifestly inadmissible.

27      As regards the third part of the second ground of appeal put forward by Bimbo in support of its appeal, it is also sufficient to point out that Bimbo never argued, before the General Court, that the earlier mark BIMBO had a reputation in Spain. It must be stressed, in this regard, that Article 8(5) of Regulation No 40/94 applies to earlier trade marks, within the meaning of Article 8(2) thereof, only in so far as they have been the subject of registration.

28      In the present case, however, as is clear from paragraph 17 of the present order, only the earlier unregistered mark BIMBO, which is well known in Spain, was taken into consideration by the Board of Appeal of OHIM and the General Court, since Bimbo, moreover, specifically based its action before the General Court on that mark alone. Consequently, in accordance with the Court’s settled case-law, cited at paragraph 16 of the present order and referred to again at paragraph 26, the third part of the second ground of appeal must be rejected as being manifestly inadmissible.

29      The second ground of appeal must therefore be rejected in its entirety as being manifestly unfounded.

30      It follows from all of the foregoing that the appeal must be dismissed in its entirety as being manifestly inadmissible.

 Costs

31      Under Article 138(1) of the Rules of Procedure, which is applicable to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and Café do Brasil SpA have applied for costs to be awarded against Bimbo, and as the latter has been unsuccessful, Bimbo must be ordered to pay the costs of these proceedings.

On those grounds, the Court (Seventh Chamber) hereby orders:

1.      The appeal is dismissed.

2.      Bimbo SA shall pay the costs.

[Signatures]

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* Language of the case: English.

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