JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

20 October 2016 (1)

(EU trade mark — Opposition proceedings — Application for EU figurative mark airpass.ro — Earlier EU word mark AirPlus International — Opposition dismissed — Rule 21 of Regulation (EC) No 2865/95 — No need to adjudicate — Article 81(4) of Regulation (EC) No 207/2009)

In Case T‑14/15,

Lufthansa AirPlus Servicekarten GmbH, established in Neu Isenburg (Germany), represented by R. Kunze and G. Würtenberger, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Melgar and H. Kunz, acting as Agents,

defendant,

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

SC Mareea Comtur SRL, established in Deva (Romania),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 17 October 2014 (Case R 1918/2013-5), relating to opposition proceedings between Lufthansa AirPlus Servicekarten and SC Mareea Comtur,

THE GENERAL COURT (Fifth Chamber),

composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 13 January 2015,

having regard to the response lodged at the Court Registry on 21 May 2015,

further to the hearing on 7 July 2016,

gives the following

Judgment

 Background to the dispute

1        On 16 February 2012, SC Mareea Comtur SRL 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).

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 35 and 39 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 35: ‘Advertising; business management; business administration; office functions’;

–        Class 39: ‘Transportation; packaging and storage of goods; travel arrangement’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 2012/77 of 24 April 2012.

5        On 24 July 2012, the applicant, Lufthansa AirPlus Servicekarten GmbH, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.

6        The opposition was based, inter alia, on the EU word mark AirPlus International, registered under number 2 335 693 for goods in Class 9 and for services in Classes 35, 36 and 42.

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

8        On 30 July 2013, the Opposition Division rejected the opposition in its entirety.

9        On that same date, the Opposition Division also issued a decision concerning opposition No B 2 041 518, brought by Airpas Aviation AG against the mark applied for, at issue in the present case, and based on the following EU figurate mark, registered under No 3 068 749:

10      That figurative mark was registered for services in Classes 35 and 42. The Opposition Division upheld the opposition in those proceedings in part and concluded that there was a likelihood of confusion for the services in Class 35. The decision adopted by the Opposition Division became definitive on 1 October 2013.

11      On 30 September 2013, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009, against the decision of the Opposition Division referred to in paragraph 8 above.

12      By decision of 17 October 2014 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs. In particular, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, in so far as the signs at issue were different.

 Procedure and forms of order sought

13      By application lodged at the Court Registry on 13 January 2015, the applicant brought the present action.

14      The applicant claims that the Court should:

–        annul the contested decision in so far as the Board of Appeal found that there was a likelihood of confusion for the services in Class 35 of the Nice Agreement;

–        order EUIPO to pay the costs.

15      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

16      The applicant requested leave, pursuant to Article 106 of the Rules of Procedure of the General Court, to be heard at a hearing and requested that the Court give its judgment following the oral procedure. The Court granted that request.

17      By way of measures of organisation of procedure pursuant to Article 89 of the Rules of Procedure, the parties were invited to reply in writing to the questions. EUIPO and the applicant replied within the period prescribed.

 Law

 Admissibility

18      Although it does not formally submit an objection to admissibility, EUIPO contends that the present action is inadmissible. EUIPO submits, on the one hand, that the contested decision is not open to an action, in accordance with Article 65(4) of Regulation No 207/2009. It submits that the Opposition Division’s decision in opposition No B 2 041 518 upheld the applicant’s claims and is not called in any way into question by the contested decision. EUIPO argues, on the other hand, that the applicant has no interest in obtaining annulment of the contested decision, in so far as it concerns the services in Class 35 since those services, following the adoption of the abovementioned decision of the Opposition Division, are no longer covered by the EU trade mark application.

19      The applicant claims that the action is admissible. In maintaining its appeal before the Board of Appeal against the services in Class 35, it argues that it has incurred unnecessary costs. During the hearing, the applicant clarified that in the contested decision the Board of Appeal ordered it to pay the costs incurred by SC Mareea Comtur. The applicant adds that, by adopting the contested decision, the Board of Appeal adversely affected the substantial goodwill associated with its marks.

20      In the first place, as regards the applicant’s standing to bring proceedings, for the purposes of Article 65(4) of Regulation No 207/2009, a decision of a Board of Appeal merely upholding the claims of the party concerned in full does not give that party standing to bring an action before the Court (see, to that effect, order of 14 July 2009, Hoo Hing Holdings v OHIM — Tresplain Investments (Golden Elephant Brand), T‑300/08, not published, EU:T:2009:275, paragraph 27).

21      In the present case, by its appeal to the Board of Appeal, the applicant sought annulment of the Opposition Division’s decision of 30 July 2013 and a finding that there was a likelihood of confusion between the applicant’s mark and the mark applied for within the meaning of Article 8(1)(b) of Regulation No 207/2009. Since the Board of Appeal rejected the appeal brought by the applicant in its entirety, the latter’s standing to bring an action before the court must be recognised. That conclusion is not called into question by the fact that in parallel proceedings, opposition No B 2 041 518, the Opposition Division refused registration of the mark applied for in relation to the services in Class 35. In the context of the present action, the applicant’s standing depends solely on the contested decision.

22      In the second place, as regards the applicant’s standing, it must be recalled that, according to settled case-law, an action for annulment is not admissible unless the natural or legal person who brought it has an interest in seeing the contested measure annulled. That interest must be vested and present and is evaluated at the date on which the action is brought, pursuant to the case-law (see order of 15 October 2013, Andechser Molkerei Scheitz v Commission, T‑13/12, not published, EU:T:2013:567, paragraph 30 and the case-law cited).

23      Interest in bringing proceedings is an essential and fundamental prerequisite for any legal proceedings (judgment of 12 November 2015, HSH Investment Holdings Coinvest-C and HSH Investment Holdings FSO v Commission, T‑499/12, EU:T:2015:840, paragraph 24). An applicant’s interest in bringing proceedings must, in the light of the purpose of the action, exist at the stage of bringing the action, failing which the action will be inadmissible (order of 30 April 2015, EEB v Commission, T‑250/14, not published, EU:T:2015:274, paragraph 15).

24      In the present case, it must be held that the applicant, whose appeal was rejected in the proceedings before the Board of Appeal, was ordered by the Board of Appeal, in accordance with Article 85(1) of Regulation No 207/2009, to assume responsibility for all the costs incurred by SC Mareea Comtur. Because annulment of the contested decision in part could lead EUIPO to partially alter its conclusion in relation to the applicant’s appeal and, consequently, to apportion the costs incurred by the parties to the proceedings differently, the applicant has an interest in bringing proceedings.

25      Consequently, this action must be declared to be admissible.

 Substance

26      In support of its action, the applicant relies on a single plea in law alleging, in essence, infringement of Article 64(1) and Article 76(1) of Regulation No 207/2009, leading to infringement of Article 8(1)(b) of that regulation.

27      The applicant argues, in essence, that the Board of Appeal wrongly adopted the contested decision with the same operative part as that found in the decision of the Opposition Division as regards the services in Class 35. According to the applicant, EUIPO could in no way have found a likelihood of confusion for those services. The applicant criticises the Board of Appeal more particularly for not taking into consideration the decision issued by the Opposition Division in the parallel proceedings refusing registration of the mark applied for in relation to the services in Class 35.

28      EUIPO disputes the applicant’s arguments.

29      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark (judgment of 21 January 2016, Laboratorios ERN v OHIM — michelle menard (Lenah.C), T‑802/14, not published, EU:T:2016:25, paragraph 18).

30      When an appeal is brought before it for annulment of a decision of the Opposition Division, the Board of Appeal is to make its decision, pursuant to Article 64(1) of Regulation No 207/2009, following an examination as to its allowability and may, in doing so, exercise any power within the competence of the department which was responsible for the contested decision or remit the case to that department for further action (judgment of 29 April 2015, Hostel Tourist World v OHIM — WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraph 30).

31      It follows from that provision that, by the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 57, and of 21 May 2015, Evyap v OHIM — Megusta Trading (nuru), T‑56/14, not published, EU:T:2015:304, paragraph 19).

32      Furthermore, pursuant to Article 76(1) in fine of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, such as those at issue in the present case, the assessment of the facts carried out by EUIPO is limited to the facts, evidence and arguments provided by the parties and the relief sought (judgment of 3 June 2015, Lithomex v OHIM — Glaubrecht Stingel (LITHOFIX), T‑273/14, not published, EU:T:2015:352, paragraph 39). That restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or may be learnt from generally accessible sources (see judgment of 8 October 2015, Benediktinerabtei St. Bonifaz v OHIM — Andechser Molkerei Scheitz (Genuß für Leib & Seele KLOSTER Andechs SEIT 1455), T‑78/14, not published, EU:T:2015:768, paragraph 26 and the case-law cited).

33      It is necessary to ascertain whether the Board of Appeal, by failing to take into consideration the decision of the Opposition Division adopted in parallel proceedings, infringed Articles 64 and 76 of Regulation No 207/2009 and, as a result, infringed Article 8(1)(b) of that regulation.

34      While it is true that it fell to the Board of Appeal to find, in the present case, that the appeal before it was partially deprived of its purpose, it must nevertheless be found that the applicant has not relied upon, in support of its action, the relevant provisions in the present case.

35      Whether an action continues to have a purpose before the Board of Appeal is a procedural question parallel to the assessment of the action itself. That question leads to a determination, in advance, but also during the assessment of the action, as to whether the merits of the action have to be assessed.

36      As noted in paragraphs 29 to 31 above, Article 64(1) and Article 76(1) of Regulation No 207/2009 are concerned exclusively with the assessment conducted by the Board of Appeal, both in law and in fact, of the substance of the cases before it, inter alia, under Article 8(1)(b) of Regulation No 207/2009.

37      However, with regard to the nature of the applicant’s arguments, it is clear that by its single plea in law the applicant intended to plead, not only infringement of Articles 64 and 76 of Regulation No 207/2009, but also infringement of Rule 21(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 laying down detailed rules for the application of Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) as amended by, inter alia, Commission Regulation (EC) No 355/2009 of 31 March 2009 and amending Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2009 L 109, p. 3), which relates to the issue of ‘multiple oppositions’. The applicant must therefore be regarded as raising a single plea in law alleging infringement of Rule 21(3) of Regulation No 2868/95.

38      In that regard, it should be borne in mind that, according to settled case-law, it is not necessary for a party to indicate expressly the provisions on which its pleas are based. It is enough for the subject matter of that party’s application and the main elements of fact and law on which it is based to be set out sufficiently clearly in the application (see judgment of 15 January 2013, Gigabyte Technology v OHIM — Haskins (Gigabyte), T‑451/11, not published, EU:T:2013:13, paragraph 28 and the case-law cited), which is the case here.

39      It is sufficiently clear from the application that, in essence, the applicant is alleging an infringement of Rule 21(3) of Regulation No 2868/95, since it submits that the Board of Appeal erred in law by failing to take into consideration the decision adopted by the Opposition Division in the parallel procedure, which refused registration of the mark applied for as regards the services in Class 35 of the Nice Agreement.

40      The applicant’s reasoning is sufficiently clear and precise to enable EUIPO to prepare its defence and for the Court to exercise its jurisdiction to review legality (see judgment of 13 January 2013, Gigabyte Technology v OHIM — Haskins (Gigabyte), T‑451/11, not published, EU:T:2013:13, paragraph 29 and the case-law cited). Although EUIPO acknowledges that the Board of Appeal ought to have found that the EU trade mark application clearly no longer covered the services in Class 35, it disputes however the applicant’s arguments by contending, inter alia, that that failure does not alter the applicant’s situation at all and does not cause any detriment to the applicant, either in terms of procedure or substance.

41      Moreover, in their replies to the written questions from the Court and at the hearing, the parties agreed to consider Rule 21 of Regulation No 2868/95 to be the provision infringed in the present case by the Board of Appeal.

42      As regards the merits of the single plea in law, in the first place, it must be recalled that, pursuant to Rule 21(2) of Regulation No 2868/95, in the event of multiple oppositions, if a preliminary examination of one or more oppositions reveals that the trade mark for which an application for registration has been filed is possibly not eligible for registration in respect of some or all of the goods or services for which registration is sought, EUIPO may suspend the other opposition proceedings. Pursuant to Rule 21(3) of Regulation No 2868/95, applicable mutatis mutandis to appeal proceedings under Rule 50(1) of that regulation, if the final decision leads to the rejection of the EU trade mark application, the parallel opposition proceedings in which the assessment has been suspended are deemed to be closed. The termination of proceedings is therefore considered to constitute a case which has not proceeded to judgment within the meaning of Article 81(4) of Regulation No 207/2009.

43      Admittedly, in the present case, the proceedings were not suspended and Rule 21(3) of Regulation No 2868/95 is therefore not immediately applicable.

44      However, on the one hand, it must be stated that, in the circumstances of the present case, Rule 21(2) of Regulation No 2868/95 could have been applied. On the other hand, given that the decision adopted in the parallel opposition proceedings has become final as a consequence of the action brought by the applicant as regards the services in Class 35, the action has become devoid of purpose in that regard. In those circumstances, Rule 21(3) of Regulation No 2868/95, which specifically refers to cases featuring multiple oppositions, can also apply by analogy.

45      It follows that, in the circumstances of the present case, in application by analogy of Rule 21(3) of Regulation No 2868/95, the Board of Appeal ought to have declared that there was no need to adjudicate and have freely allocated the costs in that regard, pursuant to Article 81(4) of Regulation No 207/2009.

46      That finding is not called into question by the arguments put forward by EUIPO.

47      First, to the extent that, on the basis of Article 75 of Regulation No 207/2009, EUIPO argues that the Board of Appeal’s decision was sufficiently reasoned, it is sufficient to note that EUIPO failed to address the submissions made by the applicant, the applicant not at any point having disputed the reasoning underlying the contested decision.

48      Second, EUIPO argues that the applicant did not suffer any harm, either in terms of procedure or substance. On the contrary, the omission by the Board of Appeal provided it with a benefit due to the disappearance of one of the grounds for the opposition.

49      In that regard, as has already been pointed out in paragraph 23 above, it must be stated that the omission by the Board of Appeal, although it had no bearing on the definitive nature of the contested decision after the conclusion of the parallel opposition proceedings, had the result of ordering the applicant to pay the costs incurred by SC Mareea Comtur within the meaning of Article 85(1) of Regulation No 207/2009. However, as is apparent from the foregoing, the Board of Appeal should have concluded that there was no need to adjudicate in part and therefore freely allocated the costs in that regard, pursuant to Article 85(4) of that regulation.

50      Third, if EUPIO admits that it failed to take into consideration the conclusion of the parallel opposition proceedings, it nonetheless takes the view that it was for the applicant to mention that element in its summary of reasons lodged before the Board of Appeal on 30 September 2013.

51      However, it must be recalled that there is no indication in Rule 21 of Regulation No 2868/95 that it is for the applicant to inform the Board of Appeal as regards the amendments made due to the conclusion of parallel opposition proceedings to the mark applied for. On the contrary, it follows from Rule 21(2) in fine of Regulation No 2868/95 that EUIPO is to inform the opposing parties in proceedings that were suspended of any relevant decisions taken during those proceedings which were continued. Moreover, even though, as argued by EUIPO at the hearing, the applicant had access to the decisions taken in parallel proceedings via the EUIPO database, it nonetheless must be stated that EUIPO is the first to be informed about proceedings which take place within it.

52      In the second place, and for the sake of completeness, it must be observed that the single plea in law must also succeed in the situation in which, instead of Rule 21(3) of Regulation No 2868/95, Rule 18(2) of that regulation should have been applied mutatis mutandis, pursuant to Article 20(5) and Article 50(1) of that regulation. In that situation, the Board of Appeal should also have found that there was no need to adjudicate in part and freely allocated the costs in that regard, pursuant to Article 85(4) of Regulation No 207/2009.

53      In view of the foregoing, the contested decision must be partially annulled, in accordance with the form of order sought by the applicant.

 Costs

54      Under Article 134(1) 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 EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 October 2015 (Case R 1918/2013-5) in so far as it concerns ‘advertising; business management; business administration; office functions’ in Class 35 of the Nice Agreement concerning the International Classification of Goods for the Purposes of the Registration of Marks, of 15 June 1957, as revised and amended;

2.      Orders EUIPO to bear its own costs and those incurred by Lufthansa AirPlus Servicekarten GmbH.

Dittrich

Schwarcz

Tomljenović

Delivered in open court in Luxembourg on 20 October 2016.

[Signatures]