JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

13 December 2016 (*)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark CAFE DEL SOL — Earlier national figurative mark Café del Sol — Failure to submit evidence in the language of the opposition proceedings — Articles 75 and 76 of Regulation (EC) No 207/2009 — Rules 19 and 20 of Regulation (EC) No 2868/95 — Rights of the defence)

In Case T‑549/15,

Ramón Guiral Broto, residing in Marbella (Spain), represented by J.L. de Castro Hermida, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

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

Gastro & Soul GmbH, established in Hildesheim (Germany),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 16 July 2015 (Case R 1888/2014-5), relating to opposition proceedings between Mr Guiral Broto and Gastro & Soul,

THE GENERAL COURT (Fourth Chamber),

composed, at the time of the deliberation, of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 September 2015,

having regard to the response lodged at the Court Registry on 24 February 2016,

having regard to the fact that no request for a hearing was submitted by the main 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 16 July 2007, Gastro & Soul GmbH 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). Registration as a mark was sought for the following figurative sign:

2        The goods and services in respect of which registration was sought are in Classes 30, 35, 41, 42, 43 and 45 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.

3        The EU trade mark application was published in Community Trade Marks Bulletin No 005/2008 of 4 February 2008.

4        On 30 April 2008, the applicant, Mr Ramón Guiral Broto, 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 the goods and services in respect of which registration was sought.

5        The opposition was based on, inter alia, the earlier Spanish figurative mark, registered on 20 April 2001, which is reproduced below:

6        That earlier mark covered services in Class 42.

7        The applicant also based his opposition on other earlier marks, but those marks had expired or the registrations of those marks were not sufficiently substantiated.

8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

9        On 23 May 2014, the Opposition Division partially upheld the opposition in respect of ‘services for providing of food and drink; temporary accommodation; outside catering’ in Class 43.

10      On 22 July 2014, Gastro & Soul GmbH filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the abovementioned decision of the Opposition Division in so far as it partially upheld the opposition.

11      By decision of 16 July 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the opposition in its entirety. It found that the applicant had not duly proved the existence and validity of his earlier mark within the time limit set by the Opposition Division.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        declare the opposition based on the earlier mark admissible;

–        confirm the decision of the Opposition Division or, if the Court lacks jurisdiction in that regard, remit the matter to the Board of Appeal of EUIPO, ordering it to find the opposition admissible;

–        allow the evidence submitted in the course of the administrative proceedings as well as that annexed to the application.

13      EUIPO contends that the Court should:

–        dismiss the application for annulment;

–        order the applicant to pay the costs.

 Law

14      In support of the action, the applicant puts forward three pleas in law. The first plea alleges that the contested decision is ultra petita. The second plea alleges that the documents which the applicant submitted in order to prove the existence of the earlier mark were sufficiently probative. The third plea is based on failure to respect the subordinate, instrumental and auxiliary nature of the procedural rules at issue and the possibility of remedying procedural irregularities.

15      In the context of the first plea, the applicant submits, in essence, that, by ruling on the admissibility of his opposition to the registration of the word mark applied for, the Board of Appeal went beyond the subject matter of the appeal which had been brought before it. According to the applicant, the appeal by the trade mark applicant, Gastro & Soul, against the Opposition Division’s decision was limited to substantive issues, namely whether there was sufficient proof of genuine use of the earlier mark and whether there was a likelihood of confusion on the part of the consumer. The applicant takes the view that by ruling on the admissibility of the opposition, the contested decision therefore went beyond the material scope of the issue submitted to the Board of Appeal for review by means of the trade mark applicant’s appeal. He maintains that the contested decision was thus ultra petita. Furthermore, the applicant takes the view that the principle that the parties should be heard has been infringed because he was not, before the Board of Appeal, able to defend himself against a possible rejection of the opposition on the basis of alleged irregularities relating to the submission of the documents attesting to his earlier rights.

16      EUIPO takes the view that examining the substantiation of the earlier rights, including the soundness of any translations, falls within the competence of the Board of Appeal irrespective of whether issues of substantiation have been specifically pleaded before it by the parties.

17      In view of those arguments, two preliminary points must be made.

18      In the first place, it is important to point out that the present case does not relate to the admissibility of the trade mark applicant’s appeal before the Board of Appeal. In paragraph 8 of the contested decision, the Board of Appeal acknowledges that the appeal against the Opposition Division’s decision is admissible and the applicant does not dispute that admissibility.

19      In the second place, it is important to point out that, in the contested decision, the Board of Appeal upheld the appeal which had been brought before it, finding that the opposition to registration of the mark applied for was unfounded and not that it was inadmissible. Although in paragraph 22 et seq. of the contested decision, the Board of Appeal stated that the fact that a colour representation of the earlier mark had not been furnished also infringed provisions concerning the admissibility of the opposition, it nonetheless took the view that that finding could not make the sanction set out in Rule 20(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) inapplicable. According to the Board of Appeal, by not providing the Opposition Division and the Board of Appeal with the translation into the language of the proceedings, namely English, of the colour claims in both the representation of the earlier figurative mark and the descriptive part of the registration certificate in respect of that mark, the applicant had not duly substantiated the scope of protection of that mark according to Rule 19 of Regulation No 2868/95. Pursuant to Rule 20(1) of Regulation No 2868/95, it therefore found that the opposition was unfounded and that the Opposition Division should have rejected it on that basis.

20      The applicant disputes that latter assessment, submitting, in essence, that, by ruling on whether the evidence substantiating the earlier mark was insufficient without the trade mark applicant having raised that issue before the Board of Appeal, the Board of Appeal acted ultra petita. According to the applicant, the extension of the subject matter of the appeal before the Board of Appeal to issues that had not been raised by the appellant before the Board of Appeal constitutes an infringement of the principle that administrative or ordinary courts may not rule on claims which have not been set out before them. The applicant submits that that principle requires there to be a correlation between the claims of the appellant before the Board of Appeal and the findings of the decision. EUIPO disputes those complaints.

21      In that regard, it is important to bear in mind that it is apparent from Article 63(1) and Article 64(1) of Regulation No 207/2009 that the powers of the Boards of Appeal imply that they are to re-examine decisions taken by EUIPO’s departments at first instance. In the context of that re-examination, the outcome of the appeal depends on whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling (judgment of 23 September 2003, Henkel v OHIM — LHS (UK) (KLEENCARE), T‑308/01, EU:T:2003:241, paragraph 26). Accordingly, through the effect of the appeal 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 24 May 2011, ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 20).

22      Furthermore, under Article 76(1) of Regulation No 207/2009, EUIPO is to examine the facts of its own motion. However, in proceedings relating to relative grounds for refusal of registration, its examination is restricted to the facts, evidence and arguments provided by the parties and the relief sought. Article 76(2) of that regulation provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

23      Accordingly, in matters within the scope of Article 76(1) of Regulation No 207/2009 and having regard to the principle of continuity of functions between the various bodies of EUIPO, the Board of Appeal is required to base its decision on all the matters of fact and of law contained in the decision contested before it which the party, or parties, concerned introduced either in the proceedings before the department which heard the application at first instance or, subject only to Article 76(2), in the appeal. The extent of the examination which the Board of Appeal must conduct in relation to the decision contested before it is not, in principle, determined solely by the grounds relied on by the party, or parties, in the proceedings before it (see judgment of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 18 and the case-law cited; judgment of 3 June 2015, Lithomex v OHIM — Glaubrecht Stingel (LITHOFIX), T‑273/14, not published, EU:T:2015:352, paragraph 37).

24      In particular, with regard to the factual context, it follows from Article 76(2) of Regulation No 207/2009 that it is for the parties to produce before EUIPO in due time the matters of fact upon which they intend to rely. It follows that no contention of illegality on the part of EUIPO may be made regarding matters of fact which were not submitted to it (judgments of 1 February 2005, HOOLIGAN, T‑57/03, EU:T:2005:29, paragraph 19, and of 11 September 2014, Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraph 34).

25      As regards the legal framework in proceedings relating to relative grounds for refusal, Article 76(1) in fine of Regulation No 207/2009 restricts the examination carried out by EUIPO to the facts, evidence and arguments provided by the parties and the relief sought. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal on which the party concerned has relied and the related facts and evidence the parties have presented. The criteria for applying a relative ground for refusal or any other provision relied on in support of claims made by the parties are naturally part of the matters of law submitted for examination by EUIPO. It should be borne in mind in this regard that a matter of law may have to be ruled on by EUIPO even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 in the light of the facts, evidence and arguments provided by the parties and the relief sought. Thus the matters of law put forward before the Board of Appeal also include any question of law which must necessarily be examined for the purpose of assessing the facts, evidence and arguments relied on by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on that question and even if EUIPO has omitted to rule on that aspect. Likewise, if it is alleged that EUIPO has committed an irregularity in dealing with the parties’ claims, such as, for example, infringement of the principle that the parties should be heard, that alleged irregularity also forms part of the legal framework of the case (judgments of 1 February 2005, HOOLIGAN, T‑57/03, EU:T:2005:29, paragraph 21; of 11 September 2014, CONTINENTAL WIND PARTNERS, T‑185/13, not published, EU:T:2014:769, paragraph 35; and of 25 June 2015, Copernicus-Trademarks v OHIM — Maquet (LUCEA LED), T‑186/12, EU:T:2015:436, paragraph 37).

26      In the present case, it is common ground that the Board of Appeal raised of its own motion the absence of a translation of the colour claims in the representation and description of the earlier figurative mark set out in that mark’s registration certificate. On that basis, it annulled the Opposition Division’s decision and rejected the applicant’s opposition to registration of the mark applied for.

27      In raising that issue and rejecting the opposition on that basis, the Board of Appeal did not exceed the scope of the appeal which had been brought before it. The colour claims in respect of the earlier mark and their translation into the language of the proceedings are amongst the relevant matters of fact and of law which the Board of Appeal is required to examine in order to decide whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling. The colour claims in respect of the earlier mark at issue are amongst the facts which were submitted to the Opposition Division for the purpose of assessing whether there was a likelihood of confusion. They could therefore be taken into account by the Board of Appeal.

28      In addition, the obligation to translate those claims into the language of the proceedings is a matter of law. Compliance with that obligation is necessary in order to ensure a correct application of Regulation No 207/2009 in the light of the facts, evidence and arguments provided by the parties and the relief sought since those claims may affect the assessment of whether there is a likelihood of confusion between the marks at issue. Furthermore, in the absence of a translation of those claims, the trade mark applicant may not have been able to defend itself adequately.

29      Consequently, it cannot be held that the Board of Appeal ruled ultra petita in ruling of its own motion on the incompleteness of the translation of the mark on which the opposition was based and rejecting the opposition on that basis.

30      However, it is also important to bear in mind that the second sentence of Article 75 of Regulation No 207/2009 provides that decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision constitutes a specific application of the general principle of protection of the rights of the defence, guaranteed, furthermore, by Article 41(2)(a) of the Charter of Fundamental Rights of the European Union, according to which a person whose interests are affected by a decision of a public authority must be given the opportunity effectively to make his point of view known (judgment of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 74). The right to be heard extends to all the matters of fact or of law which form the basis of the decision-making measure (judgment of 26 March 2014, Still v OHIM (Fleet Data Services), T‑534/12 and T‑535/12, not published, EU:T:2014:157, paragraph 31).

31      In the present case, it is not disputed that the Board of Appeal declared the applicant’s opposition unfounded pursuant to Rule 19 and Rule 20(1) of Regulation No 2868/95 without having heard the applicant. The Board of Appeal itself raised the incompleteness of the translation into the language of the proceedings of the earlier mark on which the opposition was based and concluded, as set out in paragraph 19 above, that the opposition was unfounded. As the applicant submits in his first plea in law, the fact that he was not heard on that issue constitutes a procedural irregularity (see, to that effect, judgment of 2 December 2009, Commission v Ireland and Others, C‑89/08 P, EU:C:2009:742, paragraphs 56 to 62).

32      An infringement of the rights of the defence may, however, be held to exist only provided that the failure to take into account the view of an interested party has had a concrete effect on the ability of that party to defend himself. According to settled case-law, the Court must verify, when it considers that such an irregularity has occurred, whether, given the specific factual and legal circumstances of the case, the proceedings at issue could have resulted in a different outcome if the party concerned had been better able to defend himself in the absence of that irregularity (see judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 80 and the case-law cited; of 17 December 2009, Review M v EMEA, C‑197/09 RX-II, EU:C:2009:804, paragraph 52 and the case-law cited; and of 5 May 2015, Lidl Stiftung v OHIM — Horno del Espinar (Castello), T‑715/13, not published, EU:T:2015:256, paragraph 81 and the case-law cited).

33      It must therefore be ascertained whether, if the procedural irregularity referred to in paragraph 31 above had not been committed, the applicant would have been able to supplement his opposition by providing a translation of the colour indications in respect of his earlier mark.

34      In that regard, it must be borne in mind that, pursuant to Article 76(2) of Regulation No 207/2009, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

35      As the Court of Justice has held, it follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 22 and the case-law cited).

36      In stating that the latter ‘may’, in such a case, decide to disregard such evidence, Article 76(2) of Regulation No 207/2009 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take that evidence into account (see judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 23 and the case-law cited).

37      Furthermore, under the third subparagraph of Rule 50(1) of Regulation No 2868/95, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division, unless it considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) of Regulation No 207/2009.

38      Regulation No 2868/95 therefore expressly provides that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion deriving from the third subparagraph of Rule 50(1) of Regulation No 2868/95 and from Article 76(2) of Regulation No 207/2009 to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division (judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 32). Rule 20(1) of Regulation No 2868/95 does not constitute a rule which prevents the Board of Appeal from using the discretion which Article 76(2) of Regulation No 207/2009 confers upon it since that rule must be interpreted in such a way that it is consistent with the superior rules of law set out in Regulation No 207/2009 and Article 41 of the Charter of Fundamental Rights.

39      In the present case, since, first, the Board of Appeal found that, by not providing a translation into the language of the proceedings of the indications of colour in respect of the earlier mark, the applicant had not complied with the requirements imposed by Rule 19 of Regulation No 2868/95 in terms of proof of the existence and validity of the earlier mark, resulting in the rejection of his opposition as unfounded, and, secondly, the third subparagraph of Rule 50(1) of Regulation No 2868/95 confers upon the Board of Appeal a discretion to decide whether to accept supplementary evidence, it cannot be ruled out that, if the applicant had been heard on the absence of a translation of the indications of colour in respect of his earlier mark, he would have submitted a translation of those indications which might have been accepted by the Board of Appeal and might therefore have led to the opposition proceedings resulting in a different outcome.

40      Consequently, the applicant is right in claiming that the contested decision was adopted in infringement of the principle that the parties should be heard.

41      That finding is not called into question by EUIPO’s arguments.

42      First, inasmuch as EUIPO takes the view that it was precisely the rights of the defence that the Board of Appeal upheld when it insisted that the translation of the relevant registration certificate had to be faithful to the original document, it is true that Rule 19 of Regulation No 2868/95 is justified by the necessity to observe the principle that the parties should be heard and to ensure equality of arms between the parties in inter partes proceedings (see, to that effect, judgment of 6 November 2007, SAEME v OHIM — Racke (REVIAN’s), T‑407/05, EU:T:2007:329, paragraph 35 and the case-law cited). However, the Board of Appeal cannot exempt itself from its obligation to respect the applicant’s rights of defence on the ground that it had to guarantee those of the trade mark applicant. That is all the more true because the fact of hearing the applicant on the absence of a translation of the indications of colour in respect of his earlier mark does not preclude the trade mark applicant from being heard. If, after having been heard by the Board of Appeal on the absence of a translation of those indications, the applicant provides it, the Board of Appeal is able to hear the trade mark applicant on the consequences for the proceedings of the production of that translation before it.

43      Secondly, the fact that, at the stage of the proceedings before the Opposition Division, the applicant was informed of the fact that non-compliance with the requirements concerning translation would result in the rejection of the opposition is irrelevant in assessing whether the rights of the defence were respected at the stage of the proceedings before the Board of Appeal. Since the powers of the Boards of Appeal imply that they are to re-examine decisions taken by EUIPO’s departments and, in the present case, the Board of Appeal raised of its own motion an infringement of the rules concerning the translation of the earlier mark, that information cannot be held to have enabled the applicant effectively to make known before the Board of Appeal his point of view regarding the rejection of his opposition as a result of the absence of a translation of the indications of colour in respect of his mark.

44      Thirdly, EUIPO is wrong in claiming that there is no infringement of the applicant’s rights of defence on the ground that those rights extend to the factual and legal basis on which the decision-making act is based, but not to the final position which the administration intends to adopt. In the present case, the applicant was not, in the course of the proceedings before the Board of Appeal, heard on the implications of the absence of a translation of the indications of colour in respect of his earlier mark. The matters of fact or of law which form the basis of the contested decision were not made known to the applicant before that decision was adopted.

45      Fourthly, the fact that the applicant did not, before the Board of Appeal, provide any indications specifying, in the language of the proceedings, that the earlier mark was in colour is irrelevant in assessing whether the applicant’s rights of defence were respected. The Board of Appeal’s obligation to respect the applicant’s rights of defence requires the Board of Appeal to hear the applicant on the negative implications for him of the absence of a translation of the indications of colour in respect of his earlier mark.

46      For all of the foregoing reasons, the contested decision must be annulled owing to infringement of the applicant’s rights of defence, without it being necessary to rule on the other pleas put forward by the applicant.

47      As regards the other heads of claim that the Court should declare or order the opposition admissible, confirm the decision of the Opposition Division and allow the evidence submitted in the course of the administrative proceedings, it must be borne in mind that the power of the General Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on that Court 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. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). In view of the Board of Appeal’s infringement of the applicant’s rights of defence, the Court is not in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take. Consequently, those heads of claim must be rejected.

 Costs

48      Pursuant to Article 133 of the Rules of Procedure of the General Court, a decision as to costs must be given in the judgment which closes the proceedings.

49      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.

50      In the present case, EUIPO has been largely unsuccessful. However, the applicant has not applied for EUIPO to be ordered to pay the costs. Consequently, each party must bear its own costs.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 July 2015 (Case R 1888/2014-5), relating to opposition proceedings between Mr Ramón Guiral Broto and Gastro & Soul GmbH;

2.      Dismisses the action as to the remainder;

3.      Orders EUIPO and Mr Guiral Broto each to bear their own costs.

Prek

Labucka

Kreuschitz

Delivered in open court in Luxembourg on 13 December 2016.

E. Coulon

      M. Prek

Registrar

      President