JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

26 June 2014 (*) (1)

(Community trade mark — Opposition proceedings — Application for the Community word mark GULBENKIAN — Earlier well-known national mark, company name and national logos Fundação Calouste Gulbenkian — Relative grounds for refusal — Evidence of the existence of the earlier rights — Article 8(1)(b), (4) and (5) of Regulation (EC) No 207/2009 — Article 90(a) of the Rules of Procedure)

In Case T‑541/11,

Fundação Calouste Gulbenkian, established in Lisbon (Portugal), represented by G. Marín Raigal, P. López Ronda and G. Macias Bonilla, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,

defendant,

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

Micael Gulbenkian, residing in Oeiras (Portugal), represented by J. Pimenta and A. Sebastião, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 15 July 2011 (Case R 1436/2010-2) relating to opposition proceedings between Fundação Calouste Gulbenkian and Mr Micael Gulbenkian,

THE GENERAL COURT (Sixth Chamber),

composed of S. Frimodt Nielsen (Rapporteur), President, F. Dehousse and A.M. Collins, Judges,

Registrar: J. Plingers, Administrator,

having regard to the application lodged at the Court Registry on 10 October 2011,

having regard to the response of OHIM lodged at the Court Registry on 23 February 2012,

having regard to the response of the intervener lodged at the Court Registry on 16 February 2012,

having regard to the reply lodged at the Court Registry on 26 June 2012,

having regard to the decision of 20 August 2012 granting leave to the intervener, at his request, to plead in Portuguese at the hearing,

having regard to the written observations lodged by the applicant at the Court Registry on 25 April, 27 June and 26 August 2013,

having regard to the written observations lodged by OHIM at the Court Registry on 27 May and 2 October 2013,

having regard to the written questions put to the applicant by the Court,

having regard to the observations lodged by the applicant at the Court Registry on 10 January 2014,

further to the hearing on 13 February 2014, which the intervener, who was duly invited to appear before the Court, did not attend,

gives the following

Judgment

 Background to the dispute

1        On 17 November 2005, the intervener, Mr Micael Gulbenkian, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 Community trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the word sign GULBENKIAN.

3        The goods and services in respect of which registration was sought are in Classes 4, 33, 35 to 37, 41, 42 and 44 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 4: ‘Fuels, petroleum (raw or refined), industrial oils and grease and lubricants’;

–        Class 33: ‘Alcoholic beverages (except beers)’;

–        Class 35: ‘Consultancy, advice on the provision of services in the field of management (business management); institutional support and support networks and macro-economics and information technologies, all related to business’;

–        Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’;

–        Class 37: ‘Service stations (petrol stations)’;

–        Class 41: ‘Educational services’;

–        Class 42: ‘Technical consultancy in the field of agriculture, livestock, forestry, game, and nature conservation and rural development; development of studies and projects, consultancy, consultancy in the field of engineering, in particular for the manufacturing, processing, petroleum and gas, and energy industries, environment, transport, public works, engineering work and surveys on project management, quality, maintenance and materials, industrial security and recuperation of installations, in particular quality management and building enterprises’;

–        Class 44: ‘Healthcare’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 7/2007 of 19 February 2007.

5        On 18 May 2007, the applicant, Fundação Calouste Gulbenkian, 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 all the goods and services referred to in paragraph 3 above.

6        The opposition was based on the following earlier well-known mark and rights:

–        the well-known mark Fundação Calouste Gulbenkian, covering the following goods and services: ‘Arts (plastic arts and music); charity (health and human development); science (research and promotion); education (support and development); technical and management services related to the oil industry’ (‘the well-known mark’);

–        the company name Fundação Calouste Gulbenkian, used for all of the areas listed in the first indent above (‘the company name’);

–        the Portuguese registrations No 5351 and No 5352 (‘the logos’), covering all of the goods and services listed in the first indent above and consisting of the following graphic sign:

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) of Regulation No 40/94 (now Article 8(1)(b) and (4) of Regulation No 207/2009).

8        On 28 May 2010, the Opposition Division partially upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, finding that there was a likelihood of confusion between the well-known mark and the mark applied for with regard to the educational services in Class 41 and to healthcare in Class 44.

9        The Opposition Division then rejected the opposition in so far as it was based on Article 8(4) of Regulation No 207/2009. In that regard, first, the Opposition Division found that the applicant had not provided evidence that the logos satisfied all of the conditions set out in Article 8(4) of Regulation No 207/2009, in particular the condition that the signs must confer on their proprietors the right to prohibit the use of a subsequent trade mark. Second, the Opposition Division took the view that the applicant had also failed to submit evidence that the company name had been used, in the field of science (research and promotion) or technical and management services related to the oil industry, before the date on which the application for registration of the mark applied for was filed.

10      On 27 July 2010 the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11      By decision of 15 July 2011 (the ‘contested decision’), the Second Board of Appeal of OHIM partially upheld the applicant’s appeal, in respect of the services relating to development of studies and projects, as well as to consultancy, in Class 42, and dismissed the appeal as to the remainder.

12      First, as regards the scope of the dispute before it, the Board of Appeal found that the applicant, which was seeking annulment of the Opposition Division’s decision in its entirety, was not entitled to seek annulment of that decision to that extent, as upholding the opposition as regards educational services, in Class 41, and healthcare, in Class 44, was in the applicant’s favour.

13      In addition, the Board of Appeal stated that, since the intervener was not contesting the Opposition Division’s decision as regards the abovementioned services, the latter decision had, to that extent, become final. Lastly, the Board of Appeal also pointed out that the intervener was not challenging the Opposition Division’s findings that the existence and use of the well-known mark had been proved with regard to arts (plastic arts and music), charity (health and human development) and education (support and development). It thus concluded that those findings were no longer in dispute.

14      Second, as far as the likelihood of confusion is concerned, the Board of Appeal took the view that the applicant had not submitted evidence of use of the well‑known mark as regards science and technical and management services related to the oil industry. As the Board of Appeal then went on to find that the goods and services covered by the mark applied for in Classes 4, 33, 35, 36, 37 and 42 did not bear any similarity to the services for which use of the well-known mark had been proved, it found that there was no likelihood of confusion between the mark applied for and the well-known mark as regards those goods and services.

15      Third, in respect of the application of Article 8(4) of Regulation No 207/2009, the Board of Appeal upheld the Opposition Division’s finding that the applicant had not submitted evidence of use of the company name in the field of technical and management services related to the oil industry.

16      In addition, unlike the Opposition Division, the Board of Appeal took the view that the applicant had submitted evidence of use of the company name in the field of biomedicine, but not in the field of science in general, that predated the filing date of the application for the mark applied for. As a result, the Board of Appeal found that there was a likelihood of confusion between the company name and the mark applied for in respect of the services relating to development of studies and projects, as well as to consultancy, in Class 42.

17      Lastly, the Board of Appeal upheld the finding of the Opposition Division that the applicant had not submitted evidence that the logos conferred on their proprietor the right to prohibit the use of a subsequent mark. In any event, the Board of Appeal observed that, as the evidence submitted by the applicant was the same as that which it had examined in respect of the company name, that evidence would not allow the applicant to obtain a more favourable result.

18      Fourth, the Board of Appeal rejected as irrelevant the intervener’s arguments that, first, he was the proprietor of rights which were older than those invoked by the applicant and, second, the term ‘gulbenkian’ was his family name.

19      Fifth, the Board of Appeal exercised its ‘discretionary’ power not to take into account the evidence submitted for the first time by the applicant during the appeal proceedings, on the ground that that new evidence simply confirmed the evidence that had been submitted in due time before the Opposition Division.

 Forms of order sought

20      Having regard to its answers to the written questions put to it by the Court and to the information that it provided at the hearing, of which formal note was taken, the applicant claims that the Court should:

–        alter the contested decision by upholding its opposition in its entirety;

–        in the alternative, annul the contested decision in so far as the Board of Appeal did not uphold its opposition;

–        order OHIM and the intervener to pay the costs relating to the present proceedings, as well as to the opposition and appeal proceedings before OHIM.

21      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility

 OHIM’s pleas of inadmissibility relating to certain heads of claim set out in the application

22      It must be stated at the outset that, in reply to the written questions that were put to it before the hearing and the oral questions that were put to it at the hearing, the applicant stated that its claim for alteration and annulment of the contested decision was directed against that decision only in so far as the Board of Appeal had not upheld its opposition in its entirety and solely to that extent. Furthermore, the applicant withdrew its claims that the Court should order OHIM to undertake a new examination of the evidence, to adopt a new decision taking that evidence into account and to reject the mark applied for. In addition, the applicant confirmed that its claim that the Court should ‘review and consider the documents submitted during the opposition and appeal proceedings before the OHIM regarding the reputation of the earlier mark’ constituted a plea put forward in support of its claim for alteration and annulment of the contested decision and not a separate head of claim.

23      It follows that the scope of the form of order sought by the applicant before the Court in the present case is that set out in paragraph 20 above.

24      Consequently, there is no longer any need to adjudicate on OHIM’s pleas of inadmissibility to the effect that the applicant is not entitled either to challenge the contested decision in so far as that decision upheld its opposition or to request that the Court issue directions to OHIM.

 Admissibility of the single plea in so far as that plea is based on infringement of Article 8(5) of Regulation No 207/2009 and of Article 16(3) of the TRIPS Agreement and also on the admissibility of the evidence submitted for the first time before the Court

25      In support of its action, the applicant submits that, irrespective of the comparison of the goods and services, the reputation of its earlier rights is such that, pursuant to Article 8(5) of Regulation No 207/2009, it should have led the Board of Appeal to refuse registration of the mark applied for in its entirety. The applicant relies, in support of that argument, on a number of Portuguese judicial decisions, which have become final. Furthermore, the applicant alleges infringement of Article 16(3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 15 April 1994 (OJ 1994 L 336, p. 214), which constitutes Annex 1C to the Agreement establishing the World Trade Organisation (WTO) (OJ 1994 L 336, p. 3).

26      OHIM puts forward a plea of inadmissibility in respect of those arguments and takes the view that the evidence submitted by the applicant for the first time before the Court is also inadmissible.

27      It must be borne in mind, in that regard, that, under Article 135(4) of the Rules of Procedure of the General Court the parties’ pleadings may not change the subject‑matter of the proceedings before the Board of Appeal. It follows that the parties to the proceedings cannot, on pain of inadmissibility, request that the Court undertake an assessment of facts or legal issues that have not previously been examined by the Board of Appeal (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraphs 71 to 74).

28      OHIM submits that the applicant did not base its opposition on Article 8(5) of Regulation No 207/2009. Furthermore, the applicant’s claims to the contrary are disproved by the file in respect of the proceedings before OHIM, from which it is also apparent that the applicant did not invoke infringement of Article 16(3) of the TRIPS Agreement, cited in paragraph 25 above, either before the Opposition Division or before the Board of Appeal. Consequently, the applicant’s arguments alleging infringement of those provisions and alleging that the reputation of its earlier rights should have led the Board of Appeal to uphold its opposition in its entirety, including in respect of the dissimilar goods and services, must be rejected as inadmissible.

29      Furthermore, it is apparent from the case-law cited in paragraph 27 above that the items of evidence that the applicant submitted for the first time before the Court must be rejected as inadmissible.

 The admissibility of the single plea in law in so far as it is based on infringement of Article 8(4) of Regulation No 207/2009

30      OHIM also submits that the applicant’s argument alleging infringement of Article 8(4) of Regulation No 207/2009 is not substantiated in the application and must therefore be rejected as inadmissible.

31      It must, however, be stated that the applicant relies expressly, in support of its action before the Court, on infringement of Article 8(4) of Regulation No 207/2009, a provision which it referred to in the course of the proceedings before OHIM in support of its opposition in so far as that was based on the company name and the logos (see paragraph 6 above). Furthermore, the applicant, in the context of the present action, states that its opposition is based not only on the earlier mark, but also on the company name and the logos and refers, by its arguments, to all of those earlier rights. It must therefore be held that the single plea on which the applicant relies, in so far as it is based on infringement of Article 8(4) of Regulation No 207/2009, is substantiated by all the arguments submitted in the context of the present action. Consequently, it is necessary to reject the plea of inadmissibility put forward by OHIM alleging that, in so far as it is based on that provision, the action must be dismissed as inadmissible.

 Substance

 The scope of the present dispute

32      It must be borne in mind that the Opposition Division partially upheld the opposition brought by the applicant against registration of the mark applied for on the basis of Article 8(1)(b) of Regulation No 207/2009, finding that the applicant had proved the existence of the well-known mark as regards arts (plastic arts and music), charity (health and human development) and education (support and development). Consequently, the Opposition Division upheld the opposition in respect of the services covered by the mark applied for that it regarded as similar, namely the educational services in Class 41 and healthcare in Class 44 (see paragraph 8 above).

33      In the contested decision, the Board of Appeal confirmed that assessment. It also took the view that the applicant had submitted evidence that the company name satisfied the conditions set out in Article 8(4) of Regulation No 207/2009 and had proved its use in the field of biomedicine. Consequently, it also upheld the opposition in respect of the services relating to development of studies and projects, as well as to consultancy, in Class 42.

34      By contrast, the Board of Appeal found, as the Opposition Division had done, that the applicant had not proved the use of the earlier mark or the company name in particular as regards technical and management services related to the oil industry.

35      It is necessary to uphold the Board of Appeal’s assessments in the contested decision, which are, moreover, not disputed by the applicant, as regards the definition of the relevant public, the finding that the signs at issue are similar, the finding that there is no similarity between the goods and services covered by the mark applied for and those in respect of which the Board of Appeal found that the use of the well-known mark and the company name had been proved and the finding that the applicant had not established that the logos satisfied the conditions set out in Article 8(4) of Regulation No 207/2009.

36      By contrast, it is necessary to examine the arguments by which the applicant seeks to show that the Board of Appeal should have upheld its opposition to a greater extent.

37      Consequently, given that it has been held (see paragraphs 25 to 29 above) that the applicant was not entitled to submit, for the first time before the Court, either arguments alleging that the reputation of its earlier rights should have precluded registration of the mark applied for irrespective of the goods and services in respect of which the existence of those earlier rights had been proved or items of evidence that were not submitted in the course of the proceedings before OHIM, it is necessary to examine whether the applicant is justified in claiming that, having regard to the items of evidence that were submitted in due time, the Board of Appeal erred in finding that the use of the well-known mark and the company name had not been proved as regards technical and management services related to the oil industry.

 The evidence of use of the well-known mark and the company name as regards technical and management services related to the oil industry

38      It must be pointed out at the outset that, in support of its arguments, the applicant submitted, for the first time before the Court, a series of documents which it acknowledges were not submitted to the Board of Appeal (Annex A.8: extracts from Internet searches; Annex A.9: witness statement of Mr S.; Annex A.10: interviews given by the president of the applicant in 2009 and 2010; Annex C.1: extract from the website of the company P.). The Court cannot take those items of evidence into account for the reasons stated in paragraphs 27 to 29 above.

39      Furthermore, it is necessary to exclude from the proceedings the documents submitted by OHIM as an Annex to its response, since, first, they are not documents that were examined by the Board of Appeal and, second, it is apparent from Article 76(1) of Regulation No 207/2009 that, in proceedings relating to relative grounds for refusal of registration, OHIM is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. OHIM does not have the status of a party in opposition proceedings.

40      Next, it must be pointed out that, in support of its action, the applicant criticises generally the assessment of the evidence undertaken by the Opposition Division and the Board of Appeal. It includes, in particular, in Annex A.7 to the application, a 2006 article devoted to it by a Portuguese newspaper, the title of which attributes the following phrase to its president: ‘We sell 14 million barrels of oil per year’.

41      In paragraphs 20 and 41 of the contested decision, the Board of Appeal referred to a number of items of evidence, including that article, and concluded from the examination of that evidence that the applicant was carrying out a commercial activity in the oil industry sector through its subsidiary P. Furthermore, the Board of Appeal did not in any way exclude the possibility of consumers establishing a link between the applicant’s company name and the oil sector.

42      By contrast, the Board of Appeal found that there was no evidence which made it possible for it to conclude that the applicant, whether through the intermediary of the company P. or directly, offered third companies technical and management services related to the oil industry, that is to say the services referred to by the applicant in its notice of opposition.

43      Consequently, it must be held that the applicant has not, as it was required to do, in view of the way in which it defined the earlier rights on which it based its opposition, put forward any argument or any evidence already submitted in the course of the proceedings before OHIM that makes it possible to prove the existence of the well-known mark or the use of the company name in respect of ‘technical and management services related to the oil industry’.

44      In those circumstances, the applicant is not justified in complaining that the Board of Appeal found that it had not established either the existence of the well-known mark as regards the services in question or the use of the company name in relation to those services.

45      Furthermore, it is necessary to uphold the Board of Appeal’s assessment, which the applicant does not, moreover, dispute, that the goods and services covered by the mark applied for in respect of which the opposition was not upheld do not bear any similarity to the goods and services in respect of which the existence of the earlier rights of which the applicant is the proprietor has been recognised as proved.

46      It follows that the applicant is not justified in claiming that, in respect of the goods and services covered by the mark applied for which do not bear any degree of similarity to the goods and services in respect of which its earlier rights have been proved, the Board of Appeal erred in rejecting its opposition both on the basis of Article 8(1) of Regulation No 207/2009, as regards the well-known mark, and on the basis of Article 8(4) of that regulation, as regards the company name.

47      Consequently, the present action must be dismissed, without there being any need to rule on the arguments put forward by the intervener, whose requested form of order is upheld in its entirety.

 Costs

48      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

49      Article 90(a) of the Rules of Procedures provides that where a party has caused the General Court to incur avoidable costs, the General Court may order that party to refund them.

50      In accordance with that provision, the intervener must be ordered to refund the interpreting costs occasioned by his request to be allowed to plead in Portuguese at the hearing, which he did not attend. Those costs, which were in fact borne by the Court of Justice of the European Union, and consist of the remuneration, daily allowance, travel and accommodation expenses of the free-lance interpreter used by the General Court, amount to EUR 1 807.48 in total.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Fundação Calouste Gulbenkian to pay the costs;

3.      Orders Mr Micael Gulbenkian to refund to the Court of Justice of the European Union the sum of EUR 1 807.48 in accordance with Article 90(a) of the Rules of Procedure of the General Court.

Frimodt Nielsen

Dehousse

Collins

Delivered in open court in Luxembourg on 26 June 2014.

[Signatures]