Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

14 February 2019 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark ALTUS — Earlier national word marks ALTOS — Revocation proceedings in respect of earlier marks initiated before national authorities — Likelihood of confusion — Suspension of the administrative proceedings — Rule 20(7)(c) of Regulation (EC) No 2868/95 (now Article 71(1) of Delegated Regulation (EU) 2018/625))

In Case T‑162/18,

Beko plc, established in Watford (United Kingdom), represented by G. Tritton, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being:

Acer, Inc., established in Taipei (Taiwan),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 December 2017 (Case R 1991/2016-5) relating to opposition proceedings between Acer and Beko,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 7 March 2018,

having regard to the response lodged at the Court Registry on 25 May 2018,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 6 December 2007, the applicant, Beko plc, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Classes 7, 9 and 11 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of 15 June 1957, as revised and amended.

4        The trade mark application was published in Community Trade Marks Bulletin No 032/2008 of 11 August 2008.

5        On 11 November 2008, Acer, Inc. lodged an opposition, under Article 42 of Regulation No 40/94 (now Article 46 of Regulation 2017/1001), against the registration of the mark applied for in respect of goods in Class 9. The opposition was based on 22 earlier marks containing the word ‘altos’.

6        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation 2017/1001).

7        By decision of 27 June 2013 (‘the decision of 27 June 2013’), the Opposition Division partially upheld the opposition in respect of part of the goods covered by the mark applied for on the basis of two earlier national marks, namely the Maltese word mark ALTOS, registered on 25 February 2004 under the number 41702, which designates goods in Class 9 (‘the earlier Maltese mark’), and the Slovenian word mark ALTOS, registered on 31 August 2004 under the reference Z-200470440, which designates goods in Class 9 of the Nice Agreement (‘the earlier Slovenian mark’).

8        On 27 August 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of 27 June 2013.

9        In its statement of grounds for the appeal, which was filed with the Board of Appeal on 25 October 2013, the applicant requested that the proceedings before the Boards of Appeal be suspended pending a decision in the proceedings between itself and Acer before, firstly, the Okrožno sodišče v Ljubljani (Regional Court, Llubljana, Slovenia) in Case IV Pg 5759/2013, concerning a revocation action brought by the applicant against the earlier Slovenian mark, and, secondly, the Qorti Ċivili (Civil Court, Malta) in Case 88/2014 concerning a revocation action brought by the applicant against the earlier Maltese mark.

10      By decision of 19 June 2014 of the Okrožno sodišče v Ljubljani (District Court, Llubljana), Acer’s rights were revoked for lack of genuine use of the earlier Slovenian mark (with effect from 12 July 2014).

11      By decision of 15 July 2014 by the Qorti Ċivili (Civil Court), Acer’s rights were revoked for lack of genuine use of the earlier Maltese mark (with effect from 24 February 2008).

12      By decision of 31 August 2015 (‘the decision of 31 August 2015’), the Fifth Board of Appeal annulled the Opposition Division’s decision on the ground that both earlier marks at issue had been declared invalid during the proceedings and remitted the case to the Opposition Division for examination of the opposition based on the other earlier rights relied on in support of that opposition.

13      By decision of 2 September 2016 (‘the decision of 2 September 2016’), the Opposition Division partially upheld the opposition for some of the goods covered by the mark applied for on the ground that there was a likelihood of confusion, for those goods, between the mark applied for and the earlier Slovak word mark ALTOS, registered on 9 June 2005 under number 209958, which designates goods in Class 9, and was included among the 22 marks relied on in the opposition (‘the earlier Slovak mark’).

14      On 2 November 2016, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of 2 September 2016.

15      On 3 January 2017, the applicant requested, in its statement of grounds for appeal, that the proceedings be suspended in accordance with Rule 20(7)(c) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (now Article 71(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018, supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), on the ground that it intended to initiate revocation proceedings against the earlier Slovak mark before the Slovak Industrial Property Office (‘the competent national authority’).

16      On 31 March 2017, the Board of Appeal invited Acer to provide evidence of the renewal of 12 earlier marks on which the opposition was based, including the earlier Slovak mark. Acer complied with that request on 18 April 2017.

17      On 11 May 2017, the applicant provided the Board of Appeal with a copy and an English translation of the request for revocation of the earlier Slovak mark which it had introduced on 4 April 2017 before the competent national authority.

18      By decision of 13 December 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO firstly rejected the suspension request. Next, it found that there was a likelihood of confusion between the mark applied for and the earlier Slovak mark. Finally, the Board of Appeal found that the other earlier rights on which the opposition was based could not result in a different outcome. On those grounds, the Board of Appeal upheld the decision of 2 September 2016 and dismissed the appeal.

19      By decision of 2 March 2018, attached to the application, the competent national authority revoked Acer’s rights in the earlier Slovak mark, as of 4 April 2017, due to lack of genuine use of that mark on the Slovak territory during the five year period preceding the beginning of the revocation proceedings.

 Forms of order sought

20      The applicant claims that the Court should:

–        annul the contested decision and remit the matter back to EUIPO to reconsider the request for suspension; and/or

–        orders the suspension of the proceedings;

–        order EUIPO to pay the costs.

21      EUIPO contends that the Court should:

–        ‘dismiss the application for annulment if the Board of Appeal did not make a manifest error of assessment when deciding on the suspension of the opposition proceedings’; or

–        ‘uphold the application for annulment if the Board of Appeal made a manifest error of assessment when deciding on the suspension of the opposition proceedings’.

 Law

 Admissibility of the head of claim requesting the Court to remit the matter back to EUIPO and/or order the suspension of the proceedings.

22      EUIPO argues that the applicant’s claims seeking an order from the Court remitting the matter to EUIPO and/or suspending the proceedings are inadmissible in so far ask they ask the Court to issue directions to EUIPO.

23      It must be noted, in that regard, that it is clear from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the Courts of the European Union. It is therefore not for the Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited). Therefore, the applicant’s first head of claim, inasmuch as it seeks an order from the Court remitting the matter to EUIPO to reconsider whether the request for suspension of the opposition proceedings, is inadmissible.

24      The second head of claim is also inadmissible. In fact, if that head of claim is to be understood as asking that the Court itself order the suspension of the opposition proceedings, it is inadmissible on the grounds set out in paragraph 23 above. If that head of claim is to be construed as a request addressed to the Court to suspend the judicial proceedings, it must be held that the arguments put forward in the application do not make it possible to understand their legal relevance and that it should, on that ground, be dismissed as inadmissible. According to settled case-law, the Court is obliged to dismiss as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which the head of claim is based are not indicated coherently and intelligibly in the application itself (see, to that effect, judgment of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraph 37).

 Substance

25      The applicant raises a single plea in law, alleging infringement of Rule 20(7)(c) of Regulation No 2868/95, in that the Board of Appeal wrongly rejected the suspension request, by upholding the opposition without waiting for the outcome of the revocation proceedings of the earlier Slovak mark pending before the competent national authority.

26      As regards the request for suspension, the Board of Appeal, firstly, recognised, in paragraph 36 of the contested decision, that ‘as a general rule’, a suspension of the opposition proceedings should be considered if, ‘at the time of decision’, the existence of the earlier mark on which the opposition is based is in doubt. However, according to the Board of Appeal, granting a suspension would be warranted only if it is accepted that the pending cancellation proceedings against the earlier Slovak mark would, ‘regardless of the outcome of [those] proceedings’, influence the legal effects of the earlier mark for the purposes of the opposition proceedings (paragraph 39 of the contested decision). Since the earlier Slovak mark had been registered for less than five years ‘at the time of publication of the [application for registration of the contested mark]’ and was therefore not, at that time, subject to the proof of use requirement in accordance with Article 18(1) of Regulation 2017/1001, ‘there is nothing to suggest that it could not validly serve as the basis of the opposition against the contested mark’, even considering the likelihood of success of the revocation action against the earlier Slovak mark (paragraph 41 of the contested decision).

27      In paragraph 42 of the contested decision, the Board of Appeal held, in addition, that accepting that opposition proceedings could be rendered devoid of purpose by the filing of revocation requests based on non-use during opposition proceedings would clearly render the initial protection awarded by Article 18(1) of Regulation 2017/1001 illusory and, ‘in general’, would serve as an incentive for EU trade mark applicants who are parties to opposition proceedings based on an earlier mark which has been registered for less than five years to delay proceedings until such a mark matures beyond the five year point, awaiting the possibility of filing the application for revocation.

28      In the light of those considerations, the Board of Appeal found, in paragraph 43 of the contested decision, that the suspension of the proceedings was not warranted.

29      Firstly, the applicant disagrees with all of those considerations, arguing that, contrary to what is affirmed by the Board of Appeal, if, at the time of the decision on the opposition, the earlier mark relied upon in the opposition proceedings has been declared invalid or there is good reason to believe that it will be declared as such, the opposition proceedings are devoid of purpose regardless of whether the earlier mark is revoked with effect after or before the date of publication of application for the EU trade mark. The relevant date for the purposes of assessing the validity of the earlier mark is therefore not, as held by the Board of Appeal, the date of publication of the application for the contested mark, but the date on which the Board of Appeal gives a decision on the opposition. The Board of Appeal should therefore, in accordance with its long-established practice, have suspended the proceedings pending the outcome of the revocation proceedings which were under way at the time of decision on the opposition, as there was a possibility that Acer’s rights would be revoked as from the date of the application for revocation. In addition, according to the applicant, protecting earlier marks is justified only where those marks are actually used.

30      Secondly, the applicant notes, in essence, that the Board of Appeal’s refusal to suspend the proceedings is vitiated by a manifest error of assessment and misuse of power as it does not take all of the interests at stake into account and it does not correctly weigh them, contrary to what is required according to case-law. In particular, it alleges that the Board of Appeal relied on abstract grounds without assessing the concrete circumstances of the matter. Accordingly, while, in paragraph 42 of the contested decision, the Board of Appeal invoked the risk that a suspension may serve, ‘in general’, as an incentive for applicants of EU marks to delay the proceedings until the earlier mark relied on in the opposition matures past the five year point in order to file an application for revocation, the Board of Appeal failed to examine whether, in this instance, the applicant’s conduct was dilatory. It clearly was not, in the present case, given that the parties agreed to a cooling off period lasting until 15 November 2011, in accordance with Rule 18(1) of Regulation No 2868/95 at which point the earlier Slovak mark had ceased to benefit from the five year grace period. Furthermore, it is Acer itself which sought to prolong the revocation proceedings before the competent national authority.

31      Also, the Board of Appeal’s approach in the present proceedings is contradictory since, in the decision of 31 August 2015, it rejected the opposition as it was based on the earlier Slovenian and Maltese marks due to the fact that, during the proceedings, those marks had been declared invalid by the competent national authorities, even though, at the date of the publication of the application for the EU mark, both earlier marks were still valid, since they were covered by the five year grace period. By contrast, in the contested decision, the Board of Appeal’s approach is contrary to that which it adopted in the decision of 31 August 2015, which was made in the course of the same proceedings.

32      Since the form of order sought by EUIPO is contingent on the Court’s assessment of whether the Board of Appeal committed a manifest error of assessment in deciding on the application to suspend the opposition proceedings and since, as the case may be, EUIPO considers that the Court’s assessment may lead either to annulment or to dismissal of the action, it should be considered that EUIPO defers to the wisdom of the Court.

33      It should be borne in mind that Rule 20(7)(c) of Regulation No 2868/95, applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, provides that EUIPO may suspend opposition proceedings where such a suspension is appropriate in the circumstances.

34      According to settled case-law, the Board of Appeal has a broad discretion in deciding whether or not to suspend proceedings. Rule 20(7)(c) of Regulation No 2868/95, recapitulated in paragraph 33 of the present judgment, illustrates that broad discretion. Suspending proceedings remains optional for the Board of Appeal, which will do so only if it considers it appropriate. Proceedings before the Board of Appeal are therefore not automatically suspended as a result of a request for suspension made by a party before it (see judgment of 25 November 2014, Ryalton Overseas v OHIM — S.C. Romarose Invest (KAISERHOFF), T‑556/12, not published, EU:T:2014:985, paragraph 30 and the case-law cited).

35      In exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must comply with the general principles governing procedural fairness within a Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose mark is contested, but also those of the other parties. The decision whether or not to suspend the proceedings must be the result of a weighing of the competing interests (see judgments of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 33 and the case-law cited, and of 12 November 2015, Société des produits Nestlé v OHIM — Terapia (ALETE), T‑544/14, not published, EU:T:2015:842, paragraph 27).

36      The fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 31).

37      It is in the light of those principles that it should be examined whether the factors taken into account by the Board of Appeal allowed it to find, without committing a manifest error of assessment, that the proceedings before it in the present case should not be suspended.

38      In that regard, it must be recalled, as preliminary point, that the mere fact that revocation proceedings against the earlier mark on which the opposition was based were pending does not suffice to categorise the Board of Appeal’s refusal to suspend the proceedings as a manifest error of assessment (see, to that effect, judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 33 and the case-law cited).

39      The Board of Appeal could therefore take the view that, if a proper balance was to be struck between the interests involved, it was appropriate to refuse the request for suspension, notwithstanding the existence of revocation proceedings (see, to that effect, judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 34).

40      In that regard, in the first place, the Board of Appeal was of the opinion, in essence, that whatever the outcome of those revocation proceedings and the chances that they may succeed, that would have no effect on the validity of the opposition, since, at the date of publication of the application for registration of the contested mark, it was not subject to the requirement of proof of genuine use in accordance with Article 47(2) and (3) of Regulation 2017/1001 (paragraphs 38 to 41 and 43 of the contested decision).

41      Those findings are vitiated by an error of law. Firstly, the mere fact that, upon publication of the application for registration of the contested mark, the earlier mark on which the opposition is based was valid does not render irrelevant, for the purposes of the opposition proceedings, revocation proceedings against the earlier mark brought during the course of the proceedings. In fact, the earlier mark on which the opposition is based must be valid not only at the time of the publication of the application for registration of the contested mark, but also at the time that EUIPO gives a decision on the opposition.

42      Indeed, if the earlier mark invoked by the opposition loses its validity during the course of the proceedings, those proceedings become devoid of purpose. In that regard, the Court has already held that revocation proceedings initiated after opposition has been raised could give rise to suspension of the opposition proceedings since, in the event that the earlier mark was revoked, the opposition proceedings would be devoid of purpose (judgment of 10 December 2009, Stella Kunststofftechnik v OHIM — Stella Pack (Stella), T‑27/09, EU:T:2009:492, paragraph 38).

43      It is also for that reason that, according to settled case-law, the Opposition Divisions and 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 and that, in order to ascertain whether the earlier trade mark’s function of identifying origin may be invalidated as a result of it co-existing in time with the mark applied for with which it is liable to be confused, EUIPO must be aware of the earlier mark’s term of protection (judgment of 13 September 2006, MIP Metro v OHIM — Tesco Stores (METRO), T‑191/04, EU:T:2006:254, paragraphs 34 and 38).

44      Secondly, the Court has already held that failing to assess the chances of success of the proceedings brought against the earlier mark, on which the opposition is based, may constitute a manifest error of assessment (see, to that effect, judgment of 17 February 2017, Unilever v EUIPO — Technopharma (Fair & Lovely), not published, T‑811/14, EU:T:2017:98, paragraph 67), as it means that the Board of Appeal failed to take into account all aspects of the applicant’s situation, so that it did not appraise its interests within the whole picture, and cannot be said to have properly weighed the various interests involved although it is required to do so (judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 49). It was thus for the Board of Appeal to determine, prima facie, the likelihood that an application for revocation would succeed for the purposes of weighing the competing interests (see, to that effect and by analogy, judgment of 21 October 2015, Petco Animal Supplies Store v OHIM — Guitérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 33).

45      Thirdly, it must be noted, as the applicant has claimed, that the Board of Appeal itself, by its decision of 31 August 2015 delivered in the context of the present proceedings, rejected the opposition based on the earlier Slovenian and Maltese marks on the ground that they had been declared invalid during the proceedings, although they were valid at the time of publication of the application for registration of the contested mark.

46      In the second place, the Board of Appeal also took the view that to accept that the opposition proceedings may become devoid of purpose following the filing, during the course of the proceedings, of an application for revocation on grounds of non-use would ‘render the initial protection awarded by Article 18(1) of Regulation 2017/1001 illusory’ (paragraph 42 of the contested decision).

47      That assessment is, however, erroneous. It is indeed apparent from the wording and purpose of Article 18(1) and Article 58(1)(a) and (2) of Regulation 2017/1001 that, until the period of five years following registration of the EU trade mark has expired, the rights of the proprietor cannot be declared to be revoked. Those provisions thus confer on the proprietor a grace period within which to begin genuinely using his mark, during which he may rely on the exclusive rights which the mark confers, pursuant to Article 9(1) of that regulation, in respect of all the goods and services covered by that mark, without having to demonstrate such use (judgment of 21 December 2016, Länsförsäkringar, C‑654/15, EU:C:2016:998, paragraph 26).

48      However, firstly, it must be noted, as does EUIPO, that when that period ends, the proprietor of an EU mark may have his rights revoked if, at the request of any person, he does not provide proof of genuine use of his mark during a continuous period of five years for the goods or services for which it is registered and if there are no proper reasons for non-use. It follows that the fact that opposition proceedings may become devoid of purpose in the event of revocation, during the course of the proceedings, of the earlier mark relied on in the opposition does not in any way render the grace period conferred by Article 18(1) and Article 57(1)(a) and (2) of Regulation 2017/1001 illusory, since that period remains intact during the five years provided for that purpose.

49      Secondly, the assessment of the Board of Appeal set out in paragraph 47 above is also, in the present case, undermined by the facts. The grace period for the earlier Slovak mark covered, in this instance, the period from 9 June 2005 to 9 June 2010, whereas the application for revocation was filed on 4 April 2017 (paragraph 17 of the present judgment) and related to the proof of use of the earlier Slovak mark during the period extending from 4 April 2012 to 4 April 2017 (Annex A 8 to the application), so that the possible suspension of the proceedings following that application would in no way have encroached upon the abovementioned grace period.

50      In the third place, the Board of Appeal took the view that a possible suspension of the proceedings may create, ‘in general’, an incentive, for persons applying for an EU mark, which are parties to opposition proceedings based on an earlier mark which has been registered for less than five years, to delay the proceedings until that mark matures past the five year point, awaiting the possibility of filing an application for revocation (paragraph 42 of the contested decision).

51      In that regard, firstly, it must be noted that, in assessing the global context of the application for suspension for the purposes of weighing the various interests at stake, the Board of Appeal may, indeed, take into account the stage of the procedure at which the application for suspension was filed as well as the possible dilatory conduct of the party requesting suspension.

52      However, the Board of Appeal cannot base itself in that regard on general considerations, but must examine in a concrete way the circumstances in which the request for suspension has been made. It must be observed that the Board of Appeal merely mentioned, in general terms, the existence of a possible incentive to delay the proceedings but did not examine in concreto the conduct of the procedure and that of the parties.

53      Secondly, the Board of Appeal cannot validly base its refusal of the request for suspension solely on the fact that the revocation action brought against the earlier trade mark on which the opposition was based had been brought after the appeal had been lodged and the written statement setting out the grounds of appeal had been submitted — in other words, while the opposition proceedings were still pending. That fact alone does not establish bad faith on the part of the proprietor of the mark applied for (judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 42).

54      Thirdly, the Board of Appeal did not take into account several relevant elements contained in the file before it. In fact, it must be noted, as does the applicant, that, in the present case, the proceedings had been interrupted by a cooling off period agreed upon by the parties, in accordance with Rule 18(1) of Regulation No 2868/95. That cooling off period lasted until 15 November 2011, at which point the earlier Slovak mark had ceased to benefit from the five year grace period. However, the Board of Appeal did not take that circumstance into account, and in particular the fact that the passing of time during the cooling off period was the result of the agreement made between both parties to the proceedings.

55      Furthermore, it must also be noted that the opposition was based on 22 earlier marks, the Slovak mark being chosen, for the first time, as a basis to partially reject the application for registration of the contested mark only in the decision of 2 September 2016. The Board of Appeal also failed to examine whether that circumstance may have explained the stage of the proceedings at which the request for suspension was made.

56      Finally, the argument made by EUIPO that, should the opposition be rejected and the contested mark registered, a possible conflict between that mark and the earlier mark may arise due to their simultaneous validity during the period between the date on which the application for registration of the contested mark is lodged and the date on which the earlier mark is revoked, should be dismissed. It is sufficient to observe in that regard that, under Article 11 of Regulation 2017/1001, the right conferred by an EU trade mark is to prevail against third parties only from the date of publication of registration of that mark. Consequently, the function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which has been registered only after the earlier mark has been revoked. No conflict can therefore arise between the EU mark applied for and an earlier mark which has been revoked during the opposition proceedings, given that the mark applied for may be registered only after the end of the opposition proceedings (see, to that effect and by analogy, judgment of 13 September 2006, METRO, T‑191/04, EU:T:2006:254, paragraphs 32 and 33).

57      In the light of all the foregoing, it must be concluded that the Board of Appeal failed to take into account all aspects of the applicant’s situation, so that in appraising the interests of that company the Board of Appeal did not look at the whole picture and did not properly weigh the various interests involved (see, by analogy, judgments of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 49, and of 12 November 2015, ATLETE, T‑544/14, not published, EU:2015:842, paragraph 39). Therefore, the contested decision, in refusing to suspend the opposition proceedings, is vitiated by an error of law and by manifest errors of assessment.

58      Consequently, the single plea in law must be upheld.

59      As the examination of the question of whether to suspend the proceedings before the Board of Appeal precedes the examination of whether there is a likelihood of confusion between the mark applied for and the earlier trade mark, it is necessary to annul the contested decision in its entirety.

 Costs

60      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

61      Since EUIPO has been unsuccessful, in so far as the contested decision is annulled, it must, having regard to the fact that it has not made any submissions as to costs, be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant, notwithstanding one of EUIPO’s two heads of claim that the action be upheld.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2017 (Case R 1991/2016-5);

2.      Orders EUIPO to bear its own costs and to pay those incurred by Beko plc.

Delivered in open court in Luxembourg on 14 February 2019.

*      Language of the case: English.

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