Rintisch v OHMI - Compagnie laitière européenne (PROTICURD) (Judgment) [2015] EUECJ T-382/14 (24 September 2015)

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(Community trade mark — Opposition proceedings — International registration designating the European Community — Word mark PROTICURD — Earlier national word marks PROTI and PROTIPLUS — Earlier national figurative mark Proti Power — Relative ground for refusal — Admissibility — Article 59 of Regulation (EC) No 207/2009 and Article 8(3) of Regulation (EC) No 216/96 — Obligation to state reasons — Article 75 of Regulation No 207/2009 — Genuine use of the earlier marks — Article 42(2) of Regulation No 207/2009 — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009)

Bernhard Rintisch, residing in Bottrop (Germany), represented by A. Dreyer, lawyer,

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

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

Compagnie laitière européenne SA, established in Condé-sur-Vire (France), represented by C. Hertz-Eichenrode, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 14 March 2014 (Case R 609/2011-4) relating to opposition proceedings between Mr Bernhard Rintisch and Compagnie laitière européenne SA,

composed of D. Gratsias, President, M. Kancheva (Rapporteur) and C. Wetter, Judges,

having regard to the response of OHIM lodged at the Court Registry on 30 September 2014,

having regard to the response of the intervener lodged at the Court Registry on 1 October 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

1 On 12 August 2008, the intervener, Compagnie laitière européenne SA, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration designating the European Community of the word mark PROTICURD. The international registration was based on French registration No 83556037.

2 On 12 August 2008, the international registration was notified to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in accordance with Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in, inter alia, Classes 5 and 29 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: ‘Pharmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’;

– Class 29: ‘Milk powders, whey proteins; milk beverages, with milk predominating; proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 981041 of 11 November 2008.

5 On 25 June 2009, the applicant, Mr Bernhard Rintisch, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the German word mark PROTI, registered on 3 March 1997 under the number 39702429 in respect of goods in Classes 29 and 32 corresponding, for each of those classes, to the following description:

– Class 29: ‘Milk products, namely milk-protein and whey-protein for mixing in foodstuffs; dietetic foodstuffs not for medical purposes, as included in class 29, namely food-preparations with high protein content for enrichment of foodstuffs; dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’;

– Class 32 : ‘Preparations, particularly proteins, also supplemented with vitamins and/or mineral salts as well as carbohydrates, each particularly in powder form, for beverage preparation’;

– the German word mark PROTIPLUS, registered on 20 May 1996 under the number 39549559 in respect of goods in Classes 29 and 32 corresponding, for each of those classes, to the following description:

– Class 32: ‘Preparations, particularly protein, particularly in powder form, for beverage preparation’;

registered on 5 March 1997, under the number 39608644 in respect of goods in Classes 29 and 32 corresponding, for each of those classes, to the following description:

– Class 29: ‘Milk products; protein, carbohydrates, each in particular in powder form, also as dietetic foodstuffs not for medical purposes as included in class 29’;

– Class 32: ‘Preparations, particularly proteins and carbohydrates, particularly in powder form, for beverage preparation’.

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

8 On 8 June 2010, the applicant, who was asked by the Opposition Division, at the request of the intervener, to furnish proof of use of his earlier German marks, provided, inter alia, an affidavit dated 1 July 2008, stating that those marks were used in relation to ‘protein concentrates as food supplements for the field of sport and fitness’ in Germany and stating the turnovers in respect of those marks between 2000 and 2007, as well as brochures and price lists for the year 2008, labels, and invoices showing sales of various goods under those marks in Germany between 2006 and 2008.

9 On 20 January 2011, the Opposition Division upheld the opposition in respect of the goods in Classes 5 and 29 covered by the mark applied for, but, on the other hand, rejected the opposition in respect of the goods in Class 31, which are not the subject-matter of the present action. It found, inter alia, that the proof of use submitted showed that the earlier marks had been used in respect of the goods ‘protein concentrates as food supplements for the field of sport and fitness’ in Class 29 and in respect of the goods ‘protein concentrates as food supplements for the field of sport and fitness, for beverage preparation’ in Class 32.

10 On 21 March 2011, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11 By decision of 14 March 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM partially annulled the Opposition Division’s decision and rejected the opposition in respect of all the goods covered by the mark applied for in Class 5, namely ‘pharmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’, and some of the goods covered by that mark in Class 29, namely ‘milk powders’ and ‘milk beverages, with milk predominating’. By contrast, it dismissed the appeal as regards the goods ‘whey proteins, proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’ in Class 29 covered by that mark, refusing them the protection of the international registration designating the European Community (paragraphs 52 and 53 of the contested decision). In its analysis, the Board of Appeal concentrated primarily on the earlier mark PROTI, on the ground that the outcome of the appeal could not be different when the earlier marks PROTIPLUS and Proti Power were taken into consideration (paragraphs 11 and 48 to 51 of the contested decision).

12 In the first place, as regards genuine use of the earlier mark, the Board of Appeal found, in essence, that it was possible to infer from the documents submitted by the applicant that he had, in respect of the relevant period (which ran from 17 May 2004 to 16 May 2009), proved genuine use of the earlier mark with respect to ‘preparations, particularly proteins, also supplemented with vitamins and/or mineral salts as well as carbohydrates, each particularly in powder form, for beverage preparation’ in Class 32 (paragraphs 12 to 23 of the contested decision).

13 In the second place, as regards the assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal pointed out, first, that the relevant public consisted of average consumers in Germany, but also consisted of professionals in respect of ‘pharmaceutical preparations’ (paragraph 25 of the contested decision). Secondly, as regards the comparison of the goods, it found, first of all, that the goods ‘pharmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’ in Class 5 covered by the mark applied for were dissimilar to the goods ‘protein concentrates as foods supplements for beverage preparation’ in Class 32 concerned by the earlier mark, in the light of their different purposes, one medical and the other nutritional, the absence of any complementarity between them and their production by different undertakings. Next, it found that the contested goods ‘milk powders, milk beverages, with milk predominating’ in Class 29 and the earlier goods in Class 32 were remotely similar, despite their different natures, in the light of their substitutability or complementarity. Lastly, it found that the contested goods ‘whey proteins, proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’ in Class 29 were similar to the earlier goods ‘protein concentrates as foods supplements for beverage preparation’ in Class 32 as all those goods are proteins, can be used for the same purpose and are aimed at the same public, for example sportspersons (paragraphs 26 to 30 of the contested decision). Thirdly, as regards the comparison of the signs, the Board of Appeal, first of all, pointed out that the element ‘proti’, although it was an abbreviation of the term ‘protein’, was not perceived as such or as descriptive by the German public, that the English element ‘curd’ was distinctive for the German public and that neither of those two elements dominated the overall impression of the contested mark. Next, it found that the signs at issue were visually and phonetically similar to an average degree because the earlier sign was fully contained in the beginning of the contested sign and the element ‘curd’ in the contested sign could not alter that finding. Lastly, it stated that a conceptual comparison between them was not possible (paragraphs 31 to 37 of the contested decision). Fourthly, as regards the likelihood of confusion, the Board of Appeal, first of all, found that there was no likelihood of confusion as regards the dissimilar goods in Class 5 as one of the conditions of that article was not satisfied; secondly, found that there was a likelihood of confusion in respect of the similar goods ‘whey proteins; proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’ in Class 29; and, lastly, found that there was no likelihood of confusion in respect of the goods ‘milk powders, milk beverages, with milk predominating’ in Class 29 because the remote similarity between those goods and those in relation to which genuine use of the earlier mark could be proved was not offset by a similarity between the signs which was sufficient to create a likelihood of confusion (paragraphs 38 to 47 of the contested decision).

The admissibility of the applicant’s argument concerning genuine use of the earlier marks in connection with certain goods in Class 29

16 OHIM disputes the admissibility before the General Court of the applicant’s argument concerning genuine use of the earlier marks in connection with the goods ‘milk products, namely milk-protein and whey-protein for mixing in foodstuffs’ and ‘dietetic foodstuffs not for medical purposes’ in Class 29. It maintains that the subject-matter of the proceedings before the Board of Appeal was limited to the goods in relation to which the Opposition Division had found that the applicant had proved genuine use, namely ‘protein concentrates as food supplements for the field of sport and fitness’ in Class 29 and ‘protein concentrates as food supplements for the field of sport and fitness, for beverage preparation’ in Class 32. According to OHIM, if the applicant had wanted to challenge the Opposition Division’s decision as regards goods in, in particular, Class 29 other than those mentioned above, he should have filed a cross appeal before the Board of Appeal. It maintains that the applicant’s argument before the General Court that the earlier marks have been used in connection with ‘milk products, namely milk-protein and whey protein for mixing in food stuffs’ and ‘dietetic foodstuffs not for medical purposes’ in Class 29 alters the factual and legal context of the dispute as it was brought before the Board of Appeal and is therefore inadmissible.

17 The applicant, in support of the admissibility of his argument before the General Court, replies that the decision of the Opposition Division, as regards the ‘controversial part’, allowed his claims by upholding the opposition, with the result that he could not appeal before the Board of Appeal.

18 Under Article 188 of the Rules of Procedure of the General Court ‘the pleadings lodged by the parties in proceedings before the General Court may not change the subject-matter of the proceedings before the Board of Appeal’.

19 In the present case, it is necessary to establish what constituted the subject-matter of the proceedings before the Board of Appeal as regards the goods in relation to which genuine use of the earlier marks had been proved.

20 It is apparent from the case-file that the Opposition Division found that the applicant had proved use of each of his three earlier marks in connection with ‘protein concentrates as food supplements for the field of sport and fitness’ in Class 29 and ‘protein concentrates as food supplements for the field of sport and fitness, for beverage preparation’ in Class 32. Furthermore, the Opposition Division, inter alia, took the view, as regards the earlier mark PROTI, that those goods in Class 29, in connection with which use had been proved, fell within the ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’ in respect of which that mark had been registered.

21 It follows, conversely, that the Opposition Division found that use of the earlier mark PROTI had not been proved in connection with the ‘milk products, namely milk-protein and whey-protein for mixing in foodstuffs’ and ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely food-preparations with high protein content for enrichment of foodstuffs’ (‘the other goods in Class 29’) in respect of which that mark had been registered.

22 It is also apparent from the case-file that the intervener’s appeal before the Board of Appeal related only to ‘protein concentrates as food supplements for the field of sport and fitness’ in Class 29 and ‘protein concentrates as food supplements for the field of sport and fitness, for beverage preparation’ in Class 32, to the exclusion, inter alia, of the other goods in Class 29.

23 Furthermore, it is common ground that the applicant did not file a cross appeal before the Board of Appeal and, in particular, did not dispute the Opposition Division’s assessment relating to the lack of genuine use of the earlier marks in connection with the other goods in Class 29.

24 Lastly, it must be pointed out that the Board of Appeal, in its global assessment of the likelihood of confusion between the marks at issue, including the comparison of the goods, was not required to take the other goods in Class 29 into account. According to the case-law, the Board of Appeal can examine the question of genuine use of the earlier mark only if a party raises it specifically before it (see, to that effect, judgment of 14 December 2011 in Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, ECR, EU:T:2011:739, paragraph 36 and the case-law cited). In other words, the Board of Appeal does not, of its own motion, have to re-examine the question of genuine use of the earlier mark with regard to goods which the parties did not refer to before it in the appeal or the observations in response.

25 Consequently, the case-law according to which, 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 (see, to that effect, judgment of 24 May 2011 in ancotel v OHIM — Acotel (ancotel.), T‑408/09, EU:T:2011:241, paragraph 20 and the case-law cited), is not applicable to the question of genuine use of the earlier mark, which is specific and preliminary to the examination of the opposition (see, to that effect, judgment in VÖLKL, cited in paragraph 24 above, EU:T:2011:739, paragraphs 35 and 36 and the case-law cited).

26 It follows from the foregoing that the question of genuine use of the earlier mark PROTI in connection with the other goods in Class 29 did not form the subject-matter of the proceedings before the Board of Appeal.

27 Consequently, it must be held, in accordance with Article 188 of the Rules of Procedure, that the applicant is precluded from submitting an argument relating to that question before the General Court.

28 That finding cannot be invalidated by the applicant’s claim that he could not appeal before the Board of Appeal, given that the Opposition Division’s decision had, as regards the ‘controversial part’, allowed his claims by upholding the opposition.

29 Under Article 59 of Regulation No 207/2009, which concerns proceedings before the adjudicating bodies of OHIM, ‘[a]ny party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right’.

30 Under the first sentence of Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), as amended, ‘[i]n inter partes proceedings, the defendant [before the Board of Appeal] may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal’ (judgment of 7 April 2011 in Intesa Sanpaolo v OHIM — MIP Metro (COMIT), T‑84/08, ECR, EU:T:2011:144, paragraphs 22 and 23).

31 In the present case, it must be pointed out that the fact that the Opposition Division upheld the opposition as regards the application for registration of the contested mark in respect of goods in Classes 5 and 29 is irrelevant. That assessment on the part of the Opposition Division was, in particular, based on the ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’ in connection with which it had found that there was genuine use of the earlier mark PROTI, but not on the other goods in Class 29, in respect of which it had not found that there was genuine use.

32 The Opposition Division’s decision therefore ‘adversely affected’ the applicant inasmuch as it contained an assessment, which was specific and preliminary to the examination of the opposition, that genuine use of the earlier mark PROTI had not been proved in connection with the other goods in Class 29.

33 To that extent, Article 59 of Regulation No 207/2009 allowed the applicant to appeal against the Opposition Division’s decision before the Board of Appeal.

34 Accordingly, the applicant could, pursuant to the first sentence of Article 8(3) of Regulation No 216/96, in his response before the Board of Appeal, seek a decision annulling or altering the Opposition Division’s decision on that point, although it was not raised in the intervener’s appeal.

35 However, it is common ground that the applicant did not, before the Board of Appeal, seek such a decision, with the result that the subject-matter of the proceedings before the Board of Appeal did not relate to genuine use of the earlier mark PROTI in connection with the other goods in Class 29.

36 Consequently, by way of confirmation of the finding made in paragraph 27 above in accordance with Article 188 of the Rules of Procedure, the applicant’s argument concerning the other goods in Class 29 must be rejected as inadmissible.

37 By contrast, it must be pointed out that the applicant’s argument is admissible in so far as it relates to the ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’ covered by the earlier mark PROTI.

38 OHIM and the intervener dispute the admissibility of Annexes A 7 to A 16 to the application, which the applicant produced for the first time before the Court. Those annexes contain, inter alia, information and data sheets relating to various goods, which are intended, according to the applicant to show that the goods covered by the marks at issue have a medical purpose as dietetic food supplements which overlaps with their nutritional purpose and have the same producers and distribution channels, inter alia pharmacies.

39 The applicant, in support of the admissibility of Annexes A 7 to A 16, submits that those annexes do not change the subject-matter of the proceedings, but simply develop and go deeper into the legal submissions which he had already put forward before the adjudicating bodies of OHIM. He adds that those annexes could not have been submitted earlier because he was not obliged to bring an appeal before the Board of Appeal, inasmuch as the Opposition Division had ruled in his favour by finding that there was a likelihood of confusion and upholding the opposition.

40 It is settled case-law that the purpose of actions before the Court is to review the legality of the decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009. It follows from that provision that facts which were not invoked by the parties before the adjudicating bodies of OHIM cannot be invoked at the stage of the action brought before the Court and that the Court cannot re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (see, to that effect, judgments of 18 July 2006 in Rossi v OHIM, C‑214/05 P, ECR, EU:C:2006:494, paragraphs 50 to 52, and of 11 December 2014 in CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, ECR, EU:T:2014:1058, paragraph 25 and the case-law cited).

41 As regards the applicant’s claim that those annexes could not have been submitted before the Board of Appeal, it is apparent that this must be rejected on the basis of the considerations set out in paragraphs 28 to 37 above.

42 Consequently, Annexes A 7 to A 16 to the application must be rejected as inadmissible, without it being necessary to examine their evidential value.

43 In support of the action, the applicant puts forward three pleas in law, alleging (i) infringement of Article 75 of Regulation No 207/2009; (ii) infringement of Article 42(2) of that regulation; and (iii) infringement of Article 8(1)(b) of that regulation.

44 In essence, the applicant submits, first, that the Board of Appeal infringed Article 75 of Regulation No 207/2009 (and Article 263 TFEU) by not stating the reasons for its opinion that he had not proved genuine use of the earlier trade mark PROTI (and the other trade marks on which the opposition was based) for the goods in class 29; secondly, that it infringed Article 42(2) of that regulation by taking into account only the goods in Class 32 which are registered for the earlier mark PROTI and basing its assessment of the likelihood of confusion only on those goods and not on the goods in class 29; and, thirdly, that it infringed Article 8(1)(b) of that regulation by wrongly concluding that there was no likelihood of confusion with regard to the contested goods in class 5 and some of the contested goods in class 29.

45 By the first plea, the applicant submits that the Board of Appeal did not state the reasons for its implicit assessment that he had not proved genuine use of the earlier trade mark PROTI (and the other trade marks on which the opposition was based) in connection with the goods in class 29. More specifically, he submits that the Board of Appeal did not even expressly make such an assessment, which may be deduced only from the fact that it subsequently based its examination of the likelihood of confusion only on the goods in Class 32 and did not rule expressly on the goods in Class 29. According to the applicant, it is not therefore possible to review the legality of the failure to take into account the goods in class 29, since the contested decision totally lacks a statement of reasons in that regard. The applicant maintains that the Board of Appeal infringed Article 75 of Regulation No 207/2009 (and Article 263 TFEU) by failing to state the reasons in this way.

46 OHIM contends, at the outset, that that plea is admissible only in so far as it relates to the goods in connection with which the Opposition Division had concluded that there had been genuine use and is therefore inadmissible in so far as it relates to ‘the other goods in Class 29’ (see paragraphs 21, 27 and 36 above). Next, it claims that the Board of Appeal stated adequate reasons, for the purposes of the case-law, for its finding that the evidence filed by the applicant during the administrative procedure showed genuine use only in connection with powdered protein concentrates which were to be mixed with liquids, namely the ‘protein concentrates as food supplements for the preparation of beverages’ which belong to Class 32 (see paragraphs 17, 21 and 22 of the contested decision). According to OHIM, the Board of Appeal provided a proper statement of reasons for that finding by stating that the evidence submitted during the administrative procedure referred to protein supplements which were intended to be mixed with beverages. It submits that, furthermore, that conclusion does fully correspond with the evidence filed by the applicant, because all of the descriptions of the products bearing the earlier mark PROTI, or variants thereof, show that those protein supplements are in the form of a powder which is intended to be mixed with liquid (see for example pages 233 to 235, 237, 240 and 243 of the Board of Appeal’s file).

47 The intervener takes the view that that plea is clearly unfounded, on the ground that the Board of Appeal duly examined the evidence of use submitted by the applicant before the Opposition Division and came to the conclusion that there was genuine use of the earlier mark PROTI for ‘protein concentrates as food supplements for beverage preparation’ in Class 32. It submits that that assessment is in line with the applicant’s affidavit (see paragraph 8 above) and that there was therefore no need for the Board of Appeal to give further reasons as to why the evidence of use does not show genuine use in connection with other goods. Moreover, it submits that the applicant does not state which document shows use of the goods in class 29. Lastly, it maintains that the goods ‘protein concentrates as food supplements for beverage preparation’ cannot at the same time be ‘milk products for mixing in foodstuffs’ or ‘dietetic foodstuffs, not for medical purposes’ (namely, ‘the other goods in Class 29’).

48 It should be borne in mind that, pursuant to the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. Furthermore, Article 50(2)(h) of Regulation No 2868/95 provides that the Board of Appeal’s decision is to contain the reasons. That obligation has the same scope as that laid down in Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must set out clearly and unequivocally the reasoning of the body which adopted the act in question. The purpose of that obligation is twofold: first, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision. The question whether the statement of reasons for a decision satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004 in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 63 to 65; judgment of 27 March 2014 in Intesa Sanpaolo v OHIM — equinet Bank (EQUITER), T‑47/12, ECR, EU:T:2014:159, paragraph 24; and judgment in Shape of a blade of grass in a bottle, cited in paragraph 40 above, EU:T:2014:1058, paragraph 42 and the case-law cited).

49 In the present case, it should be noted at the outset that the present plea is admissible only in so far as it concerns the ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’ covered by the earlier mark PROTI and is inadmissible in so far as it concerns the ‘milk products, namely milk-protein and whey-protein for mixing in foodstuffs’ and ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely food-preparations with high protein content for enrichment of foodstuffs’ covered by that mark (see paragraphs 18 to 37 above).

50 In order to decide on that plea alleging an infringement of essential procedural requirements consisting in a failure to state reasons, it is necessary to trace precisely the observations made by the Opposition Division, the parties before the Board of Appeal and the Board of Appeal itself concerning genuine use of the earlier marks in connection with the goods in Class 29.

51 The Opposition Division, in its decision of 20 January 2011, inter alia, found as follows:

‘Concerning the goods for which the earlier marks were used, it must be noted that the opponent [the applicant] identified the goods in his Affidavit as “protein concentrates as food supplements for the field of sport and fitness”. This indication is corroborated by the information mentioned on the other pieces of evidence, such as the labels and the brochure. Consequently, and following Article 42(2) [of Regulation No 207/2009], last sentence, … the opponent [the applicant] established use of all three earlier trade marks for the following goods:

– Class 29: protein concentrates as food supplements for the field of sport and fitness;

– Class 32: protein concentrates as food supplements for the field of sport and fitness, for beverage preparation.

Hence, for the purposes of the examination of the present opposition, the earlier trade marks are deemed to be registered only in respect of these goods.

The applicant [the intervener] argues that “protein concentrates as food supplements for the field of sport and fitness”, for which use has been shown, do not fall under the wording of the list of goods of any of the three opposing marks. The Opposition Division disagrees with this assertion and is of the opinion that the goods for which use has been proven are indeed covered by the opponent’s [the applicant’s] trade marks.

Namely, in class 29, the opponent’s [the applicant’s] “protein concentrates as food supplements for the field of sport and fitness” fall under “protein, in particular in powder form” (DE No. 39 549 559), “protein, carbo-hydrates, each in particular in powder form, also as dietetic foodstuffs not for medical purposes as included in class 29” (DE No. 39 608 644) and “dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form” (DE No 39 702 429).

In class 32, “protein concentrates as food supplements for the field of sport and fitness” fall under “preparations, particularly proteins, preferably in powder form, for beverage preparation” (DE No. 39 549 559), “preparations, particularly proteins and carbo-hydrates, particularly in powder form, for beverage preparation” (DE No. 39 608 644) and “preparations, particularly proteins, also supplemented with vitamins and/or mineral salts as well as carbo-hydrates, each particularly in powder form, for beverage preparation” (DE No 39 702 429).

In view of the above findings, the applicant’s [the intervener’s] argument must be dismissed.

Consequently, the evidence of use, considered as a whole, consists of sufficient indications concerning the place, time, extent and nature of use of the opposing trade marks in connection with the following goods:

– Class 29: protein concentrates as food supplements for the field of sport and fitness;

– Class 32: protein concentrates as food supplements for the field of sport and fitness, for beverage preparation.’

52 The intervener, in its statement of 13 May 2011, setting out the grounds for its appeal of 21 March 2011 before the Board of Appeal, claimed the following:

‘It is surprising that one product, namely “protein concentrates as food supplements for the field of sport and fitness” as described by the opponent [the applicant] can fall into two classes [29 and 32]. There is no sufficient evidence that the opponent [the applicant] has used his marks for two different products, because there is no evidence as to the sales figures realized by protein concentrates in class 29 and to the sales figures realized protein concentrates falling into class 32. Annex 3 to the submission of 8 June 2010 filed by the opponent [the applicant] only mentions drinks and tablets, liquid products and powders. … Neither the affidavit of the opponent [the applicant], nor other evidence allows to find out the extent of the use of the goods in each of the two categories, although the proof of genuine use requires proof of the commercial volume of each category of products.’

53 The applicant, in his observations of 23 August 2011, which he submitted before the Board of Appeal, responded to the intervener’s claim that it was surprising that one product could fall into two classes as follows:

‘The turnover figures, invoices, pricelists, brochures and several product packaging submitted by the opponent [the applicant] as proof of use are related to “protein concentrates as food supplements for the field of sport and fitness”. It doesn’t matter if these protein concentrates are adapted for beverages preparation or not. In fact, the goods listed in class 29 of the earlier trademarks are not limited to concentrates not adapted for beverage preparation. Therefore genuine use should have been accepted for “protein concentrates as food supplements in the field of sports and fitness” in general, not limited to the field of beverage preparation.’

54 The Board of Appeal, in paragraphs 17 and 21 to 23 of the contested decision, found as follows:

‘17 From the documents submitted, … and in particular from the brochure, price list, labels and the invoices, it can be inferred that the respondent [applicant] sold flavoured protein concentrates (in powder form) as a food supplement for persons practicing sports, in particular for bodybuilders. According to the descriptions of the goods given in the brochure and the labels the powdered protein concentrates are to be mixed with liquids, e.g. low-fat milk, in order to be consumed. …

21 As stated above, the documents prove that the respondent [applicant] sells protein concentrates in powder form as foods supplements which are mixed with liquids. Accordingly there is proof of use for the goods “protein concentrates as foods supplements for beverage preparation” in Class 32 which fall under the goods in Class 32 “preparations, particularly proteins, also supplemented with vitamins and/or mineral salts as well as carbohydrates, each particularly in powder form, for beverage preparation” for which the earlier mark is registered.

22 Consequently, the respondent [applicant] proved use of its earlier trade mark with respect to “preparations, particularly proteins, also supplemented with vitamins and/or mineral salts as well as carbohydrates, each particularly in powder form, for beverage preparation” in Class 32.

23 These are the goods that will be taken into consideration when assessing likelihood of confusion.’

55 It is apparent from the foregoing, first, that the Opposition Division found that the applicant had proved the use of his earlier marks inter alia in connection with ‘protein concentrates as food supplements for the field of sport and fitness’, which it considered to fall, as regards the earlier mark PROTI, within the ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’ in Class 29. Secondly, the intervener pleaded, before the Board of Appeal, that there was no sufficient evidence that the applicant had used his marks in connection with goods that fall within both Classes 29 and 32 and even pleaded that such a fact would be ‘surprising’. Thirdly, the applicant contended that he had proved genuine use in connection with ‘protein concentrates as food supplements for the field of sport and fitness’ in Class 29 in general, without the limitation to the field of beverage preparation which was required for inclusion in Class 32.

56 It follows that the issue of genuine use of the earlier mark PROTI in connection with the ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’ in Class 29 clearly formed the subject-matter of the proceedings before the Board of Appeal.

57 It is clear that the Board of Appeal did not, in its assessment of the evidence of use submitted by the applicant, provide any reasoning which expressly referred to any product in Class 29, in order to either acknowledge or deny that there had been genuine use of the earlier marks in connection with such goods.

58 Neither the assessments that ‘according to the descriptions of the goods given in the brochure and the labels the powdered protein concentrates are to be mixed with liquids’ and that ‘there is proof of use for the goods “protein concentrates as foods supplements for beverage preparation” in Class 32’ nor the finding that the applicant ‘proved use of its earlier trade mark with respect to “preparations, particularly proteins, also supplemented with vitamins and/or mineral salts as well as carbohydrates, each particularly in powder form, for beverage preparation” in Class 32’ can take the place of a clear and unequivocal rebuttal of the claim that there had been genuine use of the earlier marks in connection with any product in Class 29.

59 Accordingly, it is not clearly and unequivocally apparent whether the Board of Appeal concurred or not with the Opposition Division’s assessment that the applicant had proved genuine use of his earlier marks in connection with certain goods in Class 29, which had to be taken into consideration for the purposes of assessing the likelihood of confusion. The Board of Appeal did not rule expressly on that assessment of the Opposition Division, either by confirming or overturning it.

60 Moreover, the Board of Appeal also did not rule on the claims of the parties referred to in paragraphs 52 and 53 above, in particular the intervener’s claim that one product cannot fall within two classes.

61 In that regard, it must be borne in mind that the case-law according to which the Board of Appeal’s reasoning may be implicit because the Board of Appeal cannot be required to provide an account that follows exhaustively all the lines of reasoning articulated by the parties before it applies only on the express condition that that reasoning enables, first, the persons concerned to know the reasons for the Board of Appeal’s decision and, secondly, provides the competent Court with sufficient material for it to exercise its power of review (see, to that effect, judgment of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 55 and the case-law cited, and judgment in Shape of a blade of grass in a bottle, cited in paragraph 40 above, EU:T:2014:1058, paragraphs 96 and 97). That is clearly not the case here.

62 As regards OHIM’s reference to specific pages of the file relating to the proceedings before the Board of Appeal, it must be held that such a reference constitutes an attempt to provide a belated statement of reasons for the contested decision, which is inadmissible before the Court. According to settled case-law, the statement of reasons must in principle be notified to the person concerned at the same time as the act adversely affecting him as a failure to state the reasons cannot be remedied by the fact that the person concerned learns the reasons for the act during the proceedings before the Courts of the European Union (see, to that effect, judgment of 26 November 1981 in Michel v Parliament, 195/80, ECR, EU:C:1981:284, paragraph 22; judgment of 13 November 2012 in Antrax It v OHIM — THC (Radiators for heating), T‑83/11 and T‑84/11, ECR, EU:T:2012:592, paragraph 90 and the case-law cited; and judgment in Shape of a blade of grass in a bottle, cited in paragraph 40 above, EU:T:2014:1058, paragraphs 71 and 72).

63 It must therefore be held that the contested decision is vitiated by an infringement of essential procedural requirements consisting in a failure to state reasons with regard to the issue, which was, however, dealt with both by the Opposition Division and by the parties before the Board of Appeal, of whether or not there was genuine use of the earlier marks, in particular PROTI, in connection with certain goods in Class 29. The contested decision does not set out clearly and unequivocally the reasoning of the Board of Appeal in that regard and does not enable, first, the applicant to defend his rights and, secondly, the Courts of the European Union to exercise their power to review the legality of that decision.

64 Consequently, the first plea, alleging infringement of the obligation to state reasons laid down in Article 75 of Regulation No 207/2009, must be upheld.

65 The failure to state reasons which has been found to exist in paragraphs 63 and 64 above does not allow the Court to settle the question of genuine use of the earlier marks, which constitutes a question that is specific and preliminary to the examination of the opposition and of the likelihood of confusion between the marks at issue. That is a fortiori so because the goods allegedly covered by the earlier mark PROTI on which the Board of Appeal did not rule are in Class 29, like some of the goods covered by the mark applied for, whereas the goods covered by the earlier mark PROTI on which the Board of Appeal ruled are in Class 32, unlike the goods covered by the mark applied for.

66 Since the Board of Appeal did not rule clearly and unequivocally on whether or not the earlier mark PROTI had been put to genuine use in connection with the ‘dietetic foodstuffs not for medical purposes, as included in class 29, namely protein, also supplemented with vitamins and/or mineral salts as well as carbohydrates, always in particular in powder form’ in Class 29 covered by that mark and, therefore, on whether or not those goods had to be taken into consideration for the purposes of assessing whether there was a likelihood of confusion between the marks at issue, it is not for the Court to examine that question, for the first time, in its review of the lawfulness of the contested decision (see, to that effect, judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraphs 72 and 73, and judgment in VÖLKL, cited in paragraph 24 above, EU:T:2011:739, paragraph 63 and the case-law cited). It will therefore be for the Board of Appeal to rule in that regard, stating the reasons for its assessment, for the purposes of making the decision which it falls to it to give on the appeal that is still pending before it (see, to that effect, judgment in Shape of a blade of grass in a bottle, cited in paragraph 40 above, EU:T:2014:1058, paragraphs 101 and 102 and the case-law cited).

67 As the first plea has been upheld, the action must be upheld, without it being necessary to examine the second and third pleas, and, consequently, the contested decision must be annulled.

68 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.

69 Since OHIM and the intervener have been unsuccessful, first, OHIM must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter, and, secondly, the intervener must be ordered to bear its own costs.

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 March 2014 (Case R 609/2011-4);

2. Orders OHIM to bear its own costs and to pay those incurred by Mr Bernhard Rintisch;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Rintisch v OHMI - Compagnie laitière européenne (PROTICURD) (Judgment) [2015] EUECJ T-382/14 (24 September 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T38214.html Cite as: ECLI:EU:T:2015:686, EU:T:2015:686, [2015] EUECJ T-382/14

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