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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

17 November 2021 (*)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark THE ONLY ONE by alphaspirit wild and perfect – Earlier EU word mark ONE – Relative grounds for refusal – Article 8(1)(b) and (5) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and (5) of Regulation (EU) 2017/1001) – Decision taken following the annulment of an earlier decision by the General Court – Article 72(6) of Regulation (EU) 2017/1001 – Res judicata)

In Case T‑616/20,

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz and C. Elkemann, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and D. Walicka, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Amigüitos pets & life, SA, established in Lorca (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 29 July 2020 (Case R 424/2020-5), relating to opposition proceedings between Société des produits Nestlé and Amigüitos pets & life,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and T. Perišin, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 5 October 2020,

having regard to the response of EUIPO lodged at the Court Registry on 14 December 2020,

having regard to the response of the intervener lodged at the Court Registry on 15 December 2020,

having regard to the designation of another judge to complete the Chamber following the death of Judge Berke on 1 August 2021,

further to the hearing on 23 September 2021,

gives the following

Judgment

 Background to the dispute

1        On 28 April 2016, the intervener, Amigüitos pets & life, SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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, claiming the colours white, red and black, for the following figurative sign:

3        The goods in respect of which registration was sought are in Classes 5 and 31 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, and correspond, for each of those classes, to the following description:

–        Class 5: ‘Dietary, protein and vitamin supplements for animals, in particular for dogs; feeding stimulants for animals, including food coatings for giving medicines; trace elements (preparations of -) for human and animal use; protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; medicated supplements for foodstuffs for animals; medicated additives for animal foods; animal washes; antiparasitic collars for animals; attractants for pet animals; animal dips [preparations]; animal flea collars; animal sperm; animal semen for animal insemination; animal repellent formulations; medicines for veterinary purposes; absorbent diapers of cellulose for pets; powders for killing fleas on animals; pharmaceutical preparations for animal skincare; pharmaceutical preparations for animals, animal washes, disposable housebreaking pads for pets; skin treatment [medicated] for animals; foot rot vaccines; vitamins for animals; animal washes and lotions; parasiticides; antiparasitic preparations; antiparasitic collars for animals; bacterial and bacteriological preparations for veterinary use; enzyme preparations for veterinary purposes; amino acids for veterinary purposes, greases for veterinary purposes, medicines for veterinary purposes, cement for animal hooves, pharmaceuticals and veterinary preparations; hygiene products for medical purposes’;

–        Class 31: ‘Foodstuffs for animals, foodstuffs for dogs; foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; foodstuffs in the form of cubes, rings and sticks for dogs; canned foodstuffs for dogs; cheese flavoured foodstuffs for dogs; food for racing dogs; beverages for canines; dog treats [edible]; foodstuffs for dogs; dog biscuits; bones for dogs; digestible chewing bones for dogs; milk for use as foodstuffs for dogs; litter for dogs; foodstuffs for dogs; food preparations for dogs; edible chewing products for dogs; live animals; seeds, natural plants and flowers; agricultural, horticultural and forestry products and grains not included in other classes; mash for fattening domestic animals; strengthening animal forage; edible chews for animals; bird food; dog biscuits; proteins for foodstuffs for animals; aromatic sand for pets; beverages for pet animals; products for animal beds; treats for animals’.

4        The application for registration was published in European Union Trade Marks Bulletin No 2016/117 of 27 June 2016.

5        On 21 September 2016, the applicant, Société des produits Nestlé SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the earlier EU word mark ONE, which was filed on 23 December 2013 and registered on 6 May 2014 under the number 012460275 and covers goods in Class 31 corresponding to the following description: ‘Foodstuffs for animals’.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8        On 7 December 2017, the Opposition Division found that the mark applied for was likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark ONE and, consequently, upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001 in respect of most of the goods in Classes 5 and 31. By contrast, the Opposition Division rejected the opposition on the basis of Article 8(1)(b) and (5) of that regulation in respect of ‘trace elements (preparations of -) for human … use’ in Class 5 and ‘flowers’ in Class 31.

9        On 7 February 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10      By decision of 19 November 2018, the Fourth Board of Appeal of EUIPO dismissed the intervener’s appeal against the Opposition Division’s decision. More specifically, it upheld the applicant’s opposition, first, on the grounds set out in Article 8(1)(b) of Regulation 2017/1001, in respect of the goods which were identical or similar to at least an average degree, and, secondly, on the grounds set out in Article 8(5) of Regulation 2017/1001, in respect of the goods which were similar to a low degree and the goods which were dissimilar.

11      By application lodged at the Court Registry on 21 January 2019, the intervener brought an action seeking the annulment of the Fourth Board of Appeal’s decision of 19 November 2018 on the grounds of infringement of Article 8(1)(b) and (5) of Regulation 2017/1001.

12      By judgment of 19 December 2019, Amigüitos pets & life v EUIPO – Société des produits Nestlé (THE ONLY ONE by alphaspirit wild and perfect) (T‑40/19, not published, EU:T:2019:890) (‘the annulling judgment’), the General Court upheld the two pleas put forward by Amigüitos pets & life and annulled that decision. In essence, the General Court found that the very low degree of similarity between the signs at issue did not support the conclusion that there was a likelihood of confusion between them, notwithstanding the similarity, if not the identity, of the goods. According to the General Court, that conclusion could not be called into question by the arguments of EUIPO and the applicant to the effect that the earlier mark had enhanced distinctiveness and a reputation which were capable of compensating for any possible weakened inherent distinctiveness of the earlier mark. The General Court held that the evidence which the applicant had provided before EUIPO proved only that the mark PURINA ONE had a reputation and not that the earlier mark had a reputation. Consequently, in the absence of an assessment on the part of the Board of Appeal, according to the case-law, of whether the reputation of the earlier mark could be proved on the basis of a mark presented in a different form, in particular in the form of the sign PURINA ONE, and of whether the elements that differentiated those two marks prevented the relevant public from continuing to perceive the goods at issue as coming from the same undertaking, the General Court held that the arguments of EUIPO and the applicant were not capable of calling into question the finding that there was no likelihood of confusion between the marks at issue.

13      By order of 4 June 2020, Société des produits Nestlé v Amigüitos pets & life and EUIPO (C‑97/20 P, not published, EU:C:2020:442), the Court of Justice refused to allow the applicant’s appeal to proceed.

14      Following the order of 4 June 2020, Société des produits Nestlé v Amigüitos pets & life and EUIPO (C‑97/20 P, not published, EU:C:2020:442), the case was remitted, by decision of the Presidium of the Boards of Appeal of 19 February 2020, to the Fifth Board of Appeal, under the reference number R 424/2020-5, for a new ruling.

15      By decision of 29 July 2020 (‘the contested decision’), the intervener’s appeal was upheld and the applicant’s opposition was rejected in its entirety.

16      First of all, the Board of Appeal endorsed the findings in the annulling judgment as regards, first, the relevant public and that public’s level of attention and, secondly, the comparison of the goods concerned and of the marks at issue.

17      Next, the Board of Appeal found that the inherent distinctiveness of the earlier mark was normal, even though it was not, in any event, in its view, necessary to rule on that inherent distinctiveness, because, in the annulling judgment, the General Court had already held that the very low degree of similarity between the signs at issue did not support the conclusion that there was a likelihood of confusion.

18      Furthermore, as regards the claim that the earlier mark had enhanced distinctiveness, the Board of Appeal observed that, according to the annulling judgment, the evidence on which the applicant had relied before EUIPO did not establish that the earlier mark had such enhanced distinctiveness, but solely that the mark PURINA ONE had a reputation. In that regard, the Board of Appeal found, first, that the General Court had itself carried out the assessments relating to the enhanced distinctiveness of the earlier mark and, secondly, that the findings which the General Court had made in that regard, in particular in paragraphs 103 to 111 of the annulling judgment, had become final by means of res judicata and were binding upon it. On that basis, the Board of Appeal found that the earlier mark did not have the claimed enhanced distinctiveness.

19      Furthermore, given that, in the annulling judgment, the General Court had held that there was no likelihood of confusion between the marks at issue for the purposes of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found that the opposition based on that provision had to be rejected.

20      Lastly, on the basis of the finding that proof of the reputation of the earlier mark had not been furnished, the Board of Appeal pointed out that one of the conditions required by Article 8(5) of Regulation 2017/1001 was not satisfied, with the result that the opposition also had to be rejected on that basis.

 Forms of order sought

21      The applicant claims that the General Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs of the proceedings before the General Court;

–        order the intervener to pay the costs of the proceedings before the EUIPO.

22      EUIPO and the intervener contend that the General Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 The determination of the substantive law which is applicable ratione temporis

23      Given the date on which the application for registration at issue was filed, namely 28 April 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

24      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 8(1)(b) and (5), Article 46(1)(a) and the first sentence of Article 94(1) of Regulation 2017/1001 must be understood as referring, respectively, to Article 8(1)(b) and (5), Article 41(1)(a) and the first sentence of Article 75 of Regulation No 207/2009, as amended, the wording of which is identical.

25      By contrast, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001, in particular, in the present case, those of Article 72(6) of that regulation.

 Substance

26      In support of its action, the applicant relies, in essence, on three pleas in law, alleging (i) infringement of Article 72(6) of Regulation 2017/1001; (ii) infringement of the first sentence of Article 75 of Regulation No 207/2009; and (iii) infringement of Article 41(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and (5) of that regulation.

27      By its first plea, the applicant complains that the Board of Appeal did not, for the purposes of Article 72(6) of Regulation 2017/1001, take the necessary measures to comply with the annulling judgment.

28      In essence, the applicant takes the view that the Board of Appeal misinterpreted its power to re-examine the case when adopting the contested decision, inasmuch as it did not, for the purposes of assessing whether the earlier mark had enhanced distinctiveness and a reputation with regard to Article 8(1)(b) and (5) of Regulation No 207/2009, examine whether the earlier mark could rely on the reputation of the mark PURINA ONE.

29      In that regard, the applicant observes that, in the annulling judgment, the General Court expressly recognised that the question of whether the reputation of the earlier mark could be established on the basis of a mark presented in a different form had been neither raised nor examined in the decision of the Fourth Board of Appeal which was annulled. Accordingly, it submits that the Board of Appeal should have carried out such an analysis when re-examining the case after the annulment.

30      The applicant adds that, contrary to what is stated in the contested decision, the General Court could not rule, in the annulling judgment, on the question of whether the relevant public would perceive the earlier mark as having a reputation on the basis of the reputation of a mark presented in a different form. The applicant observes, in that regard, that it was not for the General Court to put itself in the place of the adjudicating bodies of EUIPO in order to assess, for the first time, a question on which the Board of Appeal had not adopted a position.

31      The applicant concludes that, if the Board of Appeal had properly re-assessed the evidence that had been presented during the proceedings before EUIPO, regarding the enhanced distinctiveness and the reputation of the earlier mark in another form, as required by the annulling judgment, it might have ruled differently on the opposition brought against the mark applied for, both on the basis of Article 8(1)(b) of Regulation No 207/2009 and on that of Article 8(5) of that regulation.

32      EUIPO, supported by the intervener, disputes those arguments and contends that the Board of Appeal fully implemented the grounds of the annulling judgment when it adopted the contested decision.

33      In that regard, EUIPO submits that, according to its reading of the annulling judgment, the General Court itself examined the question relating to the enhanced distinctiveness and the reputation of the earlier mark, in particular in the form of the mark PURINA ONE, and that the General Court’s findings in that regard have acquired the authority of res judicata.

34      The annulling judgment did not therefore, according to EUIPO, call for the Board of Appeal to carry out a new assessment of the evidence, but to adopt the findings already expressed by the General Court in its judgment.

35      Lastly, it argues that, contrary to what the applicant claims, the General Court was entitled to examine the enhanced distinctiveness and the reputation of the earlier mark, because it had all the related facts and evidence as well as the arguments of the parties at its disposal.

36      In an action before the EU judicature against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 266 TFEU and Article 72(6) of Regulation 2017/1001, to take the necessary measures to comply with any judgment ordering annulment that may be delivered by the EU judicature (judgment of 10 October 2019, Société des produits Nestlé v EUIPO – European Food (FITNESS), T‑536/18, not published, EU:T:2019:737, paragraph 34).

37      In order to comply with a judgment annulling a measure and to implement it fully, EUIPO is required to adopt a new decision, having regard not only to the operative part of the judgment but also to the grounds which led to that ruling and constitute its essential basis, in so far as they are necessary for the purposes of determining the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which EUIPO must take into account when replacing the annulled measure (see, to that effect, judgment of 10 October 2019, FITNESS, T‑536/18, not published, EU:T:2019:737, paragraph 35 and the case-law cited).

38      In the present case, it must be pointed out that, as is apparent from paragraphs 12 to 15 above, in the annulling judgment, the General Court upheld the action which the intervener had brought against the decision of the Fourth Board of Appeal of 19 November 2018 and therefore annulled that decision. Following that annulment and the refusal by the Court of Justice to allow the applicant’s appeal against the annulling judgment, the Fifth Board of Appeal adopted a new decision in the present case, namely the contested decision, in accordance with Article 72(6) of Regulation 2017/1001.

39      The parties nevertheless disagree as to whether, in accordance with that latter provision and in the light of the annulling judgment, the Fifth Board of Appeal was required to examine whether the enhanced distinctiveness and the reputation of the earlier mark could be established on the basis of another of the applicant’s marks, which was presented in a different form.

40      In that regard, it must be stated, first of all, that, in paragraphs 103 and 104 of the annulling judgment, the General Court took the view that the evidence provided by the applicant during the opposition proceedings before EUIPO did not serve to establish that the earlier mark had a reputation, but that another mark registered by the applicant, namely the mark PURINA ONE, had a reputation. On that basis, the General Court held that the Board of Appeal had erred in finding that proof of the reputation of the earlier mark had been furnished in the present case.

41      Next, in response to the arguments put forward by EUIPO and by the applicant against the foregoing finding, the General Court observed, in paragraph 108 of the annulling judgment, that, according to the case-law, the proprietor of an earlier mark may, in order to establish the reputation of that mark, rely on evidence of its reputation under a different form, in particular under the form of another registered mark, provided that the relevant public continues to perceive the goods at issue as originating from the same undertaking. The General Court added that, in order to determine whether that was the case, it had to be ascertained that the elements which differentiated the two marks did not prevent the relevant public from continuing to perceive the goods at issue as originating from a particular undertaking.

42      Furthermore, in paragraphs 109 and 110 of the annulling judgment, the General Court held that the Fourth Board of Appeal had not raised the question of whether or not the reputation of the earlier mark could be established on the basis of a mark presented in a different form, in the present case in the form of the mark PURINA ONE. Similarly, the General Court pointed out that the condition concerning the question of whether or not the elements that differentiated those two marks of the applicant prevented the relevant public from continuing to perceive the goods at issue as originating from the applicant had not been examined by the Board of Appeal either.

43      Lastly, on the basis of the foregoing considerations, the General Court held, in paragraph 111 of the annulling judgment, that the arguments of EUIPO and the applicant based on the reputation of the earlier mark in the form of the mark PURINA ONE could not call into question the conclusion set out in the annulling judgment that there was no likelihood of confusion between the marks at issue.

44      It follows that, for the purposes of complying with the annulling judgment, the Fifth Board of Appeal was required, when re-examining the applicant’s arguments regarding the enhanced distinctiveness and the reputation of the earlier mark, to raise the question of whether that reputation could be established on the basis of a trade mark registered in a different form and, in particular, to examine whether the elements which differentiated those two marks of the applicant enabled the relevant public to perceive the goods at issue as having the same origin.

45      In that regard, it must be stated that, as EUIPO concedes in its written pleadings, that question had been raised in the applicant’s arguments both before the Opposition Division and before the Board of Appeal, although, as the General Court held, in paragraphs 109 and 110 of the annulling judgment, those adjudicating bodies of EUIPO had not examined that issue. Furthermore, as the applicant submits, the response to its arguments was undoubtedly important in order to assess the merits of its opposition, because a positive assessment in respect of the enhanced distinctiveness and the reputation of the earlier mark was likely, first, to compensate for the weakened inherent distinctiveness of the earlier mark, with regard to Article 8(1)(b) of Regulation No 207/2009 and, secondly, to satisfy the conditions for the application of Article 8(5) of that regulation.

46      However, in paragraphs 27 to 29 and 34 of the contested decision, the Fifth Board of Appeal confined itself to pointing out that the General Court had itself examined the question of whether the earlier mark had enhanced distinctiveness and had held that it did not have such distinctiveness, with the result that its findings had the authority of res judicata and were binding upon the Fifth Board of Appeal. Moreover, the Fifth Board of Appeal found, without analysing whether enhanced distinctiveness or a reputation could be established by relying on the form of another registered mark, that the earlier mark did not have either enhanced distinctiveness or a reputation. By proceeding in that manner, the Fifth Board of Appeal misread the annulling judgment and consequently erred in law.

47      In that regard, it must be pointed out that, first, contrary to what the Fifth Board of Appeal found in paragraph 27 of the contested decision, the General Court was not itself, pursuant to the powers conferred on it by Article 72 of Regulation 2017/1001, entitled to assess the merits of those arguments.

48      According to settled case-law, the review which the General Court carries out under that provision is a review of the legality of the decisions of the Boards of Appeal of EUIPO, with the result that it does not have the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position (see, to that effect and by analogy, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 71 and 72 and the case-law cited).

49      However, as has been established in paragraph 42 above, the General Court held, in paragraphs 109 and 110 of the annulling judgment, that the question of whether the proprietor of a mark can rely on evidence which proves that that mark has a reputation in a different form had been neither raised nor analysed by the Board of Appeal as regards the earlier mark. The General Court therefore left open the possibility of finding that the earlier mark had enhanced distinctiveness and a reputation in a different form in accordance with the arguments which the applicant had put forward to that effect during the proceedings before EUIPO.

50      Furthermore, as regards EUIPO’s argument that the General Court held in paragraphs 98 to 104 of the annulling judgment, that the evidence provided by the applicant before EUIPO proved only the reputation of the mark PURINA ONE and not that of the earlier mark, it is sufficient to point out that such an analysis cannot be considered to be a useful response with regard to the question of whether that reputation could be inferred from another of the applicant’s registered trade marks in a different form. Moreover, contrary to what EUIPO claimed at the hearing, it must be held that the finding which is set out in paragraph 103 of that judgment does not preclude that question from being assessed by the Board of Appeal.

51      Secondly, it is apparent from the case-law that, when a decision of EUIPO is annulled by the General Court, the grounds on the basis of which that court dismissed certain arguments relied upon by the parties cannot be considered to have gained the force of res judicata (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 53).

52      In the present case, it is sufficient to point out that, in paragraphs 108 to 111 of the annulling judgment, the General Court rejected the arguments which the applicant had put forward in order to establish that the earlier mark had a reputation in a different form by holding specifically that those arguments had not been assessed during the proceedings before EUIPO.

53      Consequently, the considerations set out in those paragraphs did not, contrary to what the Board of Appeal found in paragraph 28 of the contested decision, have the force of res judicata and were not in any way final with regard to that Board of Appeal.

54      Thirdly, although it is indeed true, as EUIPO submits in essence, that, in paragraph 111 of the annulling judgment, the General Court expressly stated that the arguments of EUIPO and the applicant based on the reputation of the earlier mark examined in a different form did not call into question the conclusion set out in that judgment that there was no likelihood of confusion between the marks at issue, the fact remains that such a statement must be read in conjunction with the considerations previously set out in paragraphs 108 to 110 of the annulling judgment, which had specifically highlighted the lack of any analysis of that question on the part of the Fourth Board of Appeal.

55      Furthermore, as is submitted by the applicant, even if the General Court’s conclusion in paragraph 111 of the annulling judgment could be binding as regards the finding that there is no likelihood of confusion between the marks at issue pursuant to Article 8(1)(b) of Regulation No 207/2009, such a conclusion could not in any way apply to the examination of the merits of the applicant’s opposition pursuant to Article 8(5) of that regulation.

56      In the light of the foregoing, it must be held that, as a result of the annulling judgment, it was for the Board of Appeal to adopt a new decision whilst assessing, in particular, the arguments which the applicant had put forward regarding the reputation of the earlier mark examined in a different form, in order to examine whether those arguments were sufficient, as the applicant claims, to justify its opposition against the mark applied for under Article 8(1)(b) and (5) of Regulation No 207/2009. Consequently, it was for the Board of Appeal to rule on the question of whether the elements which differentiate the signs PURINA ONE and ONE preclude the relevant public from perceiving them as belonging to the same undertaking.

57      Since such an analysis was not carried out, it must be held that the Fifth Board of Appeal did not adopt the contested decision having regard to the grounds which had led the General Court to annul the previous decision of the Fourth Board of Appeal, and that it therefore infringed Article 72(6) of Regulation 2017/1001.

58      The applicant’s first plea must therefore be upheld, without it being necessary to examine the merits of the second and third pleas which it has put forward, and the contested decision must be annulled.

 Costs

59      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. In the present case, EUIPO and the intervener have been unsuccessful. Since the applicant has claimed in its second head of claim only that EUIPO should be ordered to pay the costs incurred before the General Court, first of all, EUIPO must be ordered to bear its own costs and to pay the costs which the applicant has incurred in the present proceedings.

60      Next, in accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs in the present proceedings.

61      Lastly, the applicant has claimed, by its third head of claim, that the intervener should be ordered to pay the costs which the applicant has incurred in the administrative proceedings before EUIPO, which gave rise to the contested decision. In that regard, it should be noted that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings solely before the Board of Appeal are to be regarded as recoverable costs (see to that effect, judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 126 and the case-law cited). Consequently, as regards the costs which the applicant incurred before the Board of Appeal, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to those proceedings (see, to that effect, judgment of 5 December 2012, Consorzio vino Chianti Classico v OHIM – FFR (F.F.R.), T‑143/11, not published, EU:T:2012:645, paragraph 74 and the case-law cited, and judgment of 29 April 2020, Lidl Stiftung v EUIPO – Plásticos Hidrosolubles (green cycles), T‑78/19, not published, EU:T:2020:166, paragraph 88 and the case-law cited).

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 July 2020 (Case R 424/2020‑5);

2.      Orders EUIPO to bear its own costs and to pay those incurred by Société des produits Nestlé SA for the purposes of the proceedings before the General Court;

3.      Orders Amigüitos pets & life, SA to bear its own costs.

Delivered in open court in Luxembourg on 17 November 2021.

*      Language of the case: English.

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