Aldo Supermarkets v EUIPO - Aldi Einkauf (ALDI) (EU trade mark - Judgment) [2018] EUECJ T-359/17 (25 October 2018)

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(EU trade mark — Opposition procedure — Application for EU word mark ALDI — Earlier national figurative mark ALDO — Relative ground for refusal — Conditions governing admissibility of the opposition — Rule 15 of Regulation (EC) No 2868/95 (now Article 2 of Delegated Regulation (EU) 2018/625) — Conditions governing representation of the earlier mark — Rule 19 of Regulation No 2868/95 (now Article 7 of Delegated Regulation 2018/625) — Lack of proof of genuine use of earlier mark — Article 42 of Regulation (EC) No 207/2009 (now Article 47 of Regulation (EU) 2017/1001)

Aldo Supermarkets, established in Varna (Bulgaria), represented initially by C. Saettel, and subsequently by T. Chevrier and M. Thewes, lawyers,

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaite-Orlovskiene, A. Folliard-Monguiral and D. Walicka, acting as Agents,

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

Aldi Einkauf GmbH & Co. OHG, established in Essen (Germany), represented by N. Lüzenrath, U. Rademacher, N. Bertram and C. Fürsen, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 March 2017 (Case R 976/2016-4), concerning opposition proceedings between Aldo Supermarkets and Aldi Einkauf,

composed of A.M. Collins, President, R. Barents (Rapporteur) and J. Passer, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 8 November 2017,

having regard to the response of the intervener lodged at the Court Registry on 13 November 2017,

1 On 31 March 2014, the intervener, Aldi Einkauf GmbH & Co. OHG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p.1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p.1)).

3 The goods and services for which registration was sought are in Classes 3, 4, 7, 9, 16, 24, 28, 31, 34 to 36, 38, 39 and 41 to 43 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.

4 Class 35, which alone is relevant in the present case, since the opposition was directed only at that class, corresponds to the following description: ‘Advertising; business management; business administration; office functions; retailing, including via the internet, in relation to foodstuffs, laundry preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; retail services for clothing, also provided via the internet, in relation to travel, printing and photographic and cinematographic development, flower delivery, and telephone and Internet offers; operation of supermarkets, retail shops and discount retail shops for foodstuffs, laundry preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; arranging contracts for the buying and selling of goods and the provision of services, for others, including on the internet (included in class 35)’.

5 The EU trade mark application was published in Community Trade Marks Bulletin No 91/2014 of 19 May 2014.

6 On 31 July 2014, the applicant, Aldo Supermarkets, gave notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the trade mark applied for, in respect of some of the services, namely those referred to in paragraph 3 above.

7 The opposition was based on the earlier Bulgarian figurative mark, reproduced below, which was filed on 12 August 2002 and registered on 11 March 2004 under No 47361:

8 The opposition was based on part of the goods and services for which the earlier mark is registered, namely the services included in Class 35, which correspond to the following description in the notice of opposition: ‘Import-export agencies, business management and business transaction administration; commercial information agencies; market research; business investigation; economic forecasting; advisory services for business management; consultancy relating to business organisation; business management consulting; exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; supply of goods for others; business inquiries; business appraisals; shop window dressing; demonstration of goods; promotion of goods; management and operation assistance to commercial businesses; business research; assistance in management of business activities; updating of advertising material; dissemination of advertisements; distribution of samples; outdoor advertising; outdoor advertising on billboards; advertising by mail order; advertising agencies; business management of hotels’.

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

10 On 29 August 2014, EUIPO sent a communication to the applicant informing it that the opposition had been found to be admissible. It also indicated that the time limit to substantiate the earlier rights and submit further material would expire on 3 January 2015.

11 Attached to this communication was an information sheet, entitled ‘Information on the proceedings’ informing the applicant that, for earlier registrations of a trade mark, other than a European Union trade mark, all the formal and substantive particulars must be provided, including a representation of the sign as filed or registered, in colour, if applicable, in a registration certificate or other equivalent document showing registration of the mark, provided it contains, alone or in combination with other documents, all the particulars of the registration. Under the heading ‘Important notes’, it was mentioned that the official document substituting the registration certificate had to provide complete information about all the particulars of the registration. For example, a publication that did not show the representation of the mark, in colour if applicable, would be insufficient.

12 On 22 September 2014, the applicant submitted a black and white copy of the registration certificate of Bulgarian mark No 47361, a translation of that document into the language of the proceedings as well as other documents and translations of those documents, concerning changes of ownership, renewal and registration of licence agreements, at the Patent Office of the Republic of Bulgaria. The mark was depicted as follows:

13 At the request of the intervener, lodged on 6 February 2015, on the basis of Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), EUIPO requested the applicant to submit proof of use of the earlier mark for the services on which the opposition was based.

14 On 15 April 2015, the applicant submitted evidence in support of its claim that the earlier mark was intensively used in Bulgaria in light of business information, commercial transactions and business administration, including a list of the 17 Aldo supermarkets operated in Bulgaria and the rental contracts and tax certificates for those outlets.

15 Furthermore, on 10 December 2015, in response to the comments of the intervener which contested the fact that the applicant had submitted only a black and white copy of its earlier mark to prove the existence of its earlier rights, the applicant filed a further copy of the notice of opposition showing the earlier mark in the following colours:

16 By decision of 26 April 2016, the Opposition Division upheld the opposition in part and rejected the application for registration in respect of the following services: ‘Retailing, including via the internet, in relation to foodstuffs, laundry preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; retail services for clothing, also provided via the internet, in relation to travel, printing and photographic and cinematographic development, flower delivery, and telephone and internet offers; operation of supermarkets, retail shops and discount retail shops for foodstuffs, laundry preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, dietary supplements, fireworks, electric apparatus/accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, gardening apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks and watches and jewellery, stationery and office supplies, books and other printed matter, furniture and other furnishings, garden furniture, household and kitchen apparatus, and accessories therefor, household goods, bed covers, including cushions, bed linen, household textile goods, clothing, headgear, footwear, sports apparatus, toys, leisure articles, animal feed, plants, tobacco products; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; arranging contracts for the buying and selling of goods and the provision of services, for others, including on the internet (included in class 35)’.

17 On 31 May 2016, the intervener filed a notice of appeal with EUIPO, under Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the decision of the Opposition Division.

18 By decision of 29 March 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO, in essence annulled the decision of the Opposition Division and rejected the opposition in its entirety.

19 In paragraphs 17 and 18 of the contested decision, the Board of Appeal observed that, since the notice of opposition contained a colour representation of the mark, the opposition was admissible under 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) [replaced by Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation No 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)], in particular rule 15(2)(e) of Regulation No 2868/95 (now Article 2(2)(f) of Delegated Regulation 2018/625).

20 As regards compliance with the provisions of Rule 19(2) of Regulation No 2868/95 (now Article 7(2) of Delegated Regulation 2018/625), the Board of Appeal noted, firstly, in paragraph 19 of the contested decision, that, within the period fixed by EUIPO for substantiation of the opposition, in accordance with Rule 19(1) of that regulation (now Article 7(1) of Delegated Regulation 2018/625), the opposing party must file proof of the existence, validity and scope of protection of its earlier mark and, secondly, in paragraph 20 of that decision, that the production of official documents as proof of the existence and validity of earlier rights was not a matter of admissibility but a matter of substantiation of the opposition.

21 The Board of Appeal added, in paragraph 21 of the contested decision, that, in accordance with Rule 19(2)(a)(ii) of Regulation No 2868/95 (now Article 7(2)(a)(ii) of Delegated Regulation 2018/625), the opposing party was obliged, as regards earlier trade marks other than an EU trade mark, to provide a copy of the corresponding registration certificate and/or other equivalent document emanating from the administration by which that trade mark was registered and, in paragraph 22 of the decision, that that obligation comprised a requirement to provide a representation of the mark as registered, which included the obligation to provide a colour representation if the mark was registered in colour.

22 The Board of Appeal noted, in paragraph 24 of the contested decision, that on 22 September 2014 the applicant had presented a black and white copy of the registration certificate of the earlier mark. Whilst that document indicated that the protected colours were ‘blue, orange and white’, it did not specify the division of the colours. The Board of Appeal added that, whilst the representation of the mark submitted on 10 December 2015 showed the mark in colour, it contained no reference to or any indication of the source from which it emanated. The Board of Appeal concluded, in paragraph 25 of the contested decision, that neither of the two documents satisfied the requirements of Rule 19(2)(a)(ii) of Regulation No 2868/95 and the opposition had therefore to be rejected under Rule 20(1) of that regulation.

23 The Board of Appeal stated, in paragraph 26 of the contested decision, that those findings could not be called into question by the fact that the intervener had erroneously challenged the facts, evidence and arguments on the basis of Rule 15(2)(e) of Regulation No 2868/95. Indeed, according to paragraph 27 of the contested decision, the evidence of the existence, validity and scope of the earlier mark which must be submitted during the opposition proceedings is listed in Rule 19(2)(a)(ii), a provision of which the applicant was deemed to be aware even before filing its opposition. The communication of 29 August 2014 and accompanying information sheet informed the applicant of the requirement to submit, as proof of the existence of the earlier right, the registration certificate or the equivalent official document to be presented as evidence of the existence of the earlier right, which had to include a representation of the mark as registered, that is to say, in colour, if applicable.

24 As regards proof of genuine use of the earlier trade mark in relation to the services for which it was registered, the Board of Appeal considered, in paragraph 29 of the contested decision, that the applicant had not provided that proof. The Board of Appeal pointed out that the English translation of the registration certificate did not refer to ‘supply of goods for others’, contrary to the Opposition Division’s finding, so that even if proof of the earlier mark had been demonstrated, the list of services referred only to ‘procurement services for others’. The Board of Appeal noted, in paragraph 33 of the contested decision, that the genuine use of the earlier mark had to be demonstrated for ‘the goods or services in respect of which it [was] registered and on which … the opponent cites as justification for [its] opposition’. Thus, the assessment could be based only on the following services in respect of which the Board of Appeal had found that genuine use had not been proven: ‘Import-export agencies; business management; commercial information agencies; marketing studies; business investigation; economic forecasting; advisory services for business management; business organisation consultancy; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; procurement services for others [purchasing goods and services for other businesses]; business inquiries; shop window dressing; demonstration of goods; promotion of goods; commercial or industrial management assistance; business research; business management assistance; updating of advertising material; dissemination of advertisements; distribution of samples; bill-posting; outdoor advertising; advertising by mail order; advertising agencies; business management of hotels’.

27 The applicant advances four pleas in support of its action. The first plea alleges an infringement of Rule 19 of Commission Regulation No 2868/95, as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4) and of the principle of legal certainty; the second plea alleges contradictory reasoning; the third plea alleges infringement of the rights of the defence and of the principle of the right to be heard and the fourth plea alleges infringement of Article 42(2) of Regulation No 207/2009 and of Regulation No 207/2009 and of Rule 22(3) and (4) of Regulation No 2868/95 (now Article 10(3) and (4) of Delegated Regulation 2018/625).

The first plea, alleging infringement of Rule 19 of Regulation No 2868/95 and of the principle of legal certainty

28 The applicant alleges an infringement of Rule 19 of Regulation No 2868/95 and of the principle of legal certainty in that the Board of Appeal dismissed as unfounded the opposition which the applicant had filed against the registration of the trade mark applied for, on the ground that it had not proven the existence of the earlier mark as required by Rule 19 of Regulation No 2868/95, which requires the production of a representation of the mark as registered, that is to say, where the mark is represented in colour, a colour representation. In the view of the applicant, Rule 19 of that regulation goes no further than to require ‘a copy of the relevant registration certificate’. It does not stipulate, as does Rule 15 of that regulation, that, where the registered mark is a colour mark, the opposing party must also file a representation of the mark as registered, that is to say, in colour. The Board of Appeal therefore added a requirement not expressly provided for in Rule 19 of Regulation No 2868/95.

29 In that respect, it must be recalled that the opposition procedure is governed by Rules 15 to 22 of Regulation No 2868/95 (now Articles 2 to 10 of Regulation 2018/625) and, with respect to the conditions governing representation of the earlier mark, Rules 15 and 19.

30 Firstly, Rule 15(2)(e) of that regulation provides that the notice of opposition must contain ‘a representation of the earlier mark as registered or applied for; if the earlier mark is in colour, the representation shall be in colour’.

‘1. [EUIPO] shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least two months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).

2. Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:

(a) if the opposition is based on a trade mark which is not an EU trade mark, evidence of its filing or registration, by submitting:

(ii) if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time-limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered;

3. The information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

4. [EUIPO] shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by [EUIPO].’

32 Under Rule 20(1) of Regulation No 2868/95 (now Article 8(1) and (7) of Delegated Regulation 2018/625), ‘if, until expiry of the period referred to in Rule 19(1) of that regulation, the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition is to be rejected as unfounded’.

33 The Board of Appeal confirmed the decision of the Opposition Division, holding that, in accordance with Rule 15(2)(e) of Regulation No 2868/95, the notice of opposition contained a representation of the earlier mark in colour, so that the opposition was admissible (paragraphs 17 and 18 of the contested decision).

34 According to the Board of Appeal, in accordance with Rule 19(2)(a)(ii) of Regulation No 2868/95, it was for the applicant to submit a copy of the relevant registration certificate or any equivalent document, which included the obligation to provide a representation in colour if the contested trade mark was in colour (paragraphs 21 and 22 of the contested decision).

35 The Board of Appeal found, in paragraph 24 of the contested decision, firstly, that, with its letter of 22 September 2014, the applicant had submitted a copy in black and white of the registration certificate for the earlier mark and that that document stated that the colours protected were blue, orange and white, without specifying to which part of the mark those colours related and, secondly, that the representation of the mark submitted on 10 December 2015 showed the mark in colour, but did not include any reference or any indication of the source whence it came.

36 The Board of Appeal deduced from those findings that neither document satisfied the requirements of Rule 19(2)(a)(ii) of Regulation No 2868/95, since the registration certificate did not show that the mark in colour and the colour representation did not indicate the source from which it came, and accordingly rejected the opposition.

37 It must be recalled that it has previously been held that it is necessary to interpret Rule 19(2) of Regulation No 2868/95 to mean that the possibility of providing an equivalent document does not relate only to the renewal certificate, but to both the registration certificate and the renewal certificate. The requirement to produce the registration certificate is not an end in itself, but is intended to ensure that EUIPO has available to it reliable proof of the existence of the mark on which the opposition is based. It must also be borne in mind that the first sentence of Rule 19(2) of Regulation No 2868/95 provides that the opposing party must provide ‘proof’ of the existence, validity and scope of protection of his earlier mark and that the second sentence of Rule 19(2) of Regulation No 2868/95 merely specifies the items which must be provided in order to furnish such ‘proof’. A teleological interpretation of Rule 19(2) of Regulation No 2868/95 thus permits the conclusion that, ultimately, what is crucial is that EUIPO should have available to it reliable ‘proof’ of the existence, validity and scope of protection of an earlier trade mark on which an opposition is based (judgment of 5 February 2016, Kicktipp v OHMI — Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 62.

38 Furthermore, the production of a document emanating from the competent authority and containing the same information as that which appears in a registration certificate meets that requirement. An opposing party cannot be required to produce a registration certificate when it provides a document emanating from the same authority — which is therefore just as reliable as a registration certificate — which contains all the necessary information (judgment of 5 February 2016, kicktipp, T‑135/14, EU:T:2016:69, paragraph 63).

39 Moreover, it is clear from the case-law that the legal requirements concerning the presentation of the facts, evidence and arguments and of the supporting documents are not conditions of admissibility of the opposition but conditions relating to the examination of its substance (judgment of 13 June 2002, Chef Revival USA v OHMI — Massagué Marín (Chef), T‑232/00, EU:T:2002:157, paragraph 37).

40 Contrary to the applicant’s claims, Rule 19 of Regulation No 2868/95, by requiring the submission of a ‘copy’ of the certificate referred to, can relate only to a copy which is identical in all respects to the original held by the proprietor of the trade mark, so that the copy must be fully faithful to the original and must include the same colours as the original, without modification or alteration.

41 This is the condition on the basis of which the intervener and EUIPO were in a position precisely to determine the substance and extent of the protection enjoyed by the earlier mark. In the present case, it must be noted that three different representations of the earlier mark were filed before EUIPO. One, filed on 31 July 2014, containing the colour orange, blue and white, a second, filed on 22 September 2014, in black and white and a third, filed on 10 December 2015, containing the colours black, red and white.

42 As EUIPO was correct to point out, the requirement for proof in Rule 19(2) of Regulation No 2868/95 concerns the production of an official document demonstrating that the trade mark is actually registered and, where applicable, showing the form in which it is registered. That requirement for proof differs from the conditions of admissibility of the opposition.

43 Thus, for the purposes of admissibility, it suffices that the notice of opposition includes a representation, in colour if necessary, of the earlier mark, whatever its source, enabling its clear identification with the requisite reliability. Those requirements are distinct from those applicable to proof of the existence, validity and scope of protection of the earlier mark, in which the conformity, with the registration certificate or the document proving that the mark is actually registered and in what form, of the document submitted in copy must be full and not open to challenge.

44 It follows that, contrary to the applicant’s claims, the production of a copy of a registration certificate which is fully in line with the original from which it was copied does not satisfy the aim of identification, as in the notice of opposition, but that of demonstration of the existence, validity and scope of protection of the earlier mark as registered.

45 In so far as the applicant claims that a black and white copy of the registration certificate, complemented by a .pdf file showing the earlier mark and by the opposition form duly completed in colour, is perfectly reliable, it is appropriate to note that Rule 19 of Regulation No 2868/95 expressly provides for the sending of a ‘copy’ of the registration certificate, which presupposes that that copy is identical in every respect to that certificate, including, of course, as regards the colours claimed by the earlier mark, so as to satisfy the requirement for ‘reliable proof’ of the existence, validity and scope of the protection of the earlier mark, as the Court recognised in paragraph 62 of the judgment of 5 February 2016, kicktipp (T‑135/14, EU:T:2016:69).

46 Failing that, there is a difference in the representation of the earlier mark, one in black and white and the other in colour, without EUIPO being able to determine which of those representations enjoys protection under Regulation No 207/2009.

47 In that regard, it is appropriate to recall that, in EUIPO’s letter of 29 August 2014 requesting the applicant to provide evidence of its earlier mark, it was expressly stated, in the information note attached, that the registration certificate or any equivalent official document submitted as evidence of the existence of the earlier right was to include a representation of the mark as registered, that is to say, in colour if necessary.

48 In addition, it is appropriate, in any event, to note that the various variations of the representation of the earlier mark (in orange, blue and white on 31 July 2014, in black and white on 22 September 2014 and in red, black and white on 10 December 2015) certainly do not satisfy the condition of accuracy and reliability inherent to Rule 19 of Regulation No 2868/95. They therefore do not permit the view to be taken that EUIPO has reliable proof of the existence of the mark on which the opposition is based and to establish that it is the earlier mark of which EUIPO must verify the existence and scope of protection.

49 Furthermore, contrary to the applicant’s claims, the text of Rule 19 of Regulation No 2868/95 does not in any way permit any flexibility, any more than it can be held that the Board of Appeal was excessively formalistic.

50 In that regard, it must be borne in mind that it has previously been held that, where an opposition is based on an earlier national registered trade mark, it is common ground that the evidence of the existence, validity and scope of protection of that mark which must be submitted during the opposition proceedings is set out precisely and exhaustively in Rule 19(2)(a)(ii) and Rule 19(3) of Regulation No 2868/95 (now Article 7(3) of Delegated Regulation 2018/625), so that an opponent is in a position to be aware, even before filing its notice of opposition, of the specific documents which it must produce in support of that opposition. Consequently, the Board of Appeal must, in those circumstances, exercise its discretion restrictively (judgment of 28 September 2016, Pinto Eliseu Baptista Lopes Canhoto v EUIPO — University College London (CITRUS SATURDAY), T‑400/15, not published, EU:T:2016:569, paragraph 31; see also, to that effect, judgment of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraph 40).

51 As regards the applicant’s argument that the EUIPO Guidelines, in particular point 4.2.3.5 thereof, allow the possibility of submitting a document from an unofficial origin showing a mark in colour, accompanied by a registration certificate, in black and white, of the same mark, it must be pointed out that, as EUIPO correctly states, in certain Member States (the Republic of Cyprus and the Republic of Latvia), national trade marks are not published in colour purely for technical reasons and, in other Member States, publications in colour came into being only recently.

52 However, those Guidelines, in the version of 1 February 2017, provide that an official document is to be submitted with the representation of the mark in colour, together with a colour claim and a colour description, both of which are translated into the language of the proceedings. The directives specify, firstly, that ‘Where the national trade mark office does not provide a detailed colour claim identifying the colours, and instead it says “colours claimed” (or similar wording), this is acceptable as long as this entry is translated into the language of the proceedings’ and, secondly, that ‘where the national office [(e.g. the Portuguese Trade Mark Office)] does not provide any indication of a colour claim on its certificate or official extract, further documents must be submitted to prove this claim (e.g. a copy of the publication of the mark in the bulletin)’.

53 It must therefore be held that the possibility offered by the EUIPO Guidelines to provide other documents to support a claim of a colour mark applies only to marks which are registered in States in which the certificate does not make it possible to provide representation of the registered mark in colour. However, the applicant has not claimed at all that, in Bulgaria, the National Office was unable to provide representation of those marks registered in colour.

54 Thus, by requiring the prior rights to be proved by a ‘copy of the registration certificate’, Rule 19 of Regulation No 2868/95 necessarily requires, as EUIPO argues, an exact reproduction of the original.

56 Thus, in paragraph 51 of the judgment of 20 July 2017, Mediaexpert v EUIPO — Mediaexpert (mediaexpert) (T‑780/16, not published, EU:T:2017:538), the Court held, among the reasons justifying rejection of the application for a declaration of invalidity due to the lack of full translation of the registration certificate of the earlier mark, inter alia, even if that finding was made obiter dicta in that judgment, that the representation of the earlier mark submitted by the applicant to it was in black and white and therefore did not correspond to the earlier mark as it appeared, in colour, in the online register of the Polish Patent Office.

57 It must therefore be held that, since EUIPO is not responsible for managing national registrations and is not the administration at which the application for a trade mark was filed, for the purposes of Rule 19(2)(a)(ii) of Regulation No 2868/95, the documents submitted by the applicant did not constitute, for the purpose of that provision, proof of the existence, validity and scope of protection of the earlier mark (see, to that effect, judgment of 26 November 2014, Aldi Einkauf v OHIM — Alifoods (Alifoods), T‑240/13, EU:T:2014:994, point 28).

58 It follows from all the foregoing that the first plea in law must be rejected.

59 According to the applicant, there is contradictory reasoning, in that the Board of Appeal stated in paragraph 22 of the contested decision that the proof of the existence of the earlier mark comprised the obligation to furnish a representation of the earlier mark, as registered, which comprised the obligation to furnish a colour representation, even though, assuming that that interpretation were correct, a colour representation had in fact been attached by the applicant to its notice of opposition, which the Board of Appeal noted in paragraph 18 of the contested decision and which had enabled it to declare the action to be admissible under Rule 15(2)(e) of Regulation No 2868/95; that contradiction therefore amounts to a lack of reasoning which vitiates the contested decision.

60 It is clear that that plea is based on a misreading of the contested decision by the applicant.

61 Indeed, paragraph 18 of the contested decision concerns the sole question of the admissibility of the opposition in the light of Rule 15(2)(e) of Regulation No 2868/95.

62 In that regard, the Board of Appeal was correct to find that the notice of opposition included a representation of the earlier mark in colour. The Board of Appeal was able to base on that its finding that the opposition was admissible, since it complied with Rules 15 to 17 of Regulation No 2868/95.

63 However, paragraphs 19 to 28 of the contested decision do not relate at all to the issue of admissibility of the opposition, but to the substantive issue, namely the proof by the applicant of its earlier right.

64 It has previously been held, firstly, that a failure to comply with the conditions set out in Rule 15 of Regulation No 2868/95 leads to rejection of the opposition as inadmissible, and, secondly, that the legal requirements concerning the presentation of the facts, evidence and observations and of the documents submitted in support of the opposition, including their translations into the language of the opposition proceedings, are not conditions of admissibility of the opposition but conditions relating to the examination of its substance (see judgment of 17 June 2008, El Corte Inglés v OHMI — Abril Sánchez et Ricote Saugar (BoomerangTV), T‑420/03, EU:T:2008:203, paragraphs 65 and 66 and the case-law cited).

65 It is therefore without contradictory reasoning that the Board of Appeal found, in paragraph 18 of the contested decision, that the opposition was admissible under Rule 15 of Regulation No 2868/95 since the notice of opposition contained a colour representation of the earlier mark, and, furthermore, took the view, in paragraph 25 of the contested decision, with regard to the proof of the earlier right, that the applicant had not provided that proof, since it had not filed a copy of the registration certificate identical to the original, in colour, in accordance with Rule 19 of Regulation No 2868/95.

The third plea in law, alleging infringement of the rights of defence and of the adversarial principle

67 The applicant complains, in essence, that the Board of Appeal raised of its own motion the absence of evidence of the existence of the earlier mark and, on that basis, annulled the Opposition Division’s decision without having heard the applicant.

68 In that regard, as stated in paragraph 39 above, the legal requirements concerning the presentation of the facts, evidence and observations and of the documents submitted in support of the opposition, including their translations into the language of the opposition proceedings, are not conditions of admissibility of the opposition but conditions relating to the examination of its substance. Accordingly, the Opposition Division is not required to point out to the opponent the deficiency constituted by its failure to produce such evidence in support of the opposition or a translation of that evidence into the language of the opposition proceedings (judgments of 13 June 2002, Chef, T‑232/00, EU:T:2002:157, paragraph 53; of 30 June 2004, GE Betz v OHMI — Atofina Chemicals (BIOMATE), T‑107/02, EU:T:2004:196, paragraph 70, and of 17 June 2008, BoomerangTV, T‑420/03, EU:T:2008:203, paragraph 66).

69 Moreover, as has been recalled in paragraph 50 above, where an opposition is based on an earlier national registered mark, it is common ground that the evidence of the existence, validity and scope of protection of that mark which must be submitted during the opposition proceedings is set out precisely and exhaustively in Rule 19(2)(a)(ii) and Rule 19(3) of Regulation No 2868/95, so that an opponent is in a position to be aware, even before filing its notice of opposition, of the specific documents which it must produce in support of that opposition. Accordingly, the Board of Appeal must, in those circumstances, exercise its discretion restrictively and may allow the late submission of such documents only if the surrounding circumstances are likely to justify the delay in the submission of evidence (judgment of 28 September 2016, CITRUS SATURDAY, T‑400/15, not published, EU:T:2016:569, paragraph 31; see also, to that effect, judgment of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraph 40).

70 In the first place, it is appropriate to note that, in its information note attached to its letter of 29 August 2014, EUIPO informed the applicant that the registration certificate or an equivalent official document had to be submitted as evidence of the existence of the earlier right and that this document should include a representation of the mark as registered, that is to say, in colour if appropriate.

71 In the second place, in its pleading of 21 August 2015, therefore pre-dating the Opposition Division’s decision, the intervener contended that the applicant had not proved the existence of its earlier rights, since, whereas, initially, namely in the notice of opposition, it had sent a colour representation of the earlier mark, it had attached, to prove the existence of its earlier right, only a copy in black and white of the earlier mark. The intervener reiterated the claim that the appellant had not proved the existence of its earlier right in its appeal of 24 August 2016 before the Board of Appeal against the decision of the Opposition Division. Although the intervener referred to Rule 15 of Regulation No 2868/95, it relied, however, specifically on a lack of proof by the applicant of its earlier rights, so that it cannot validly be argued that the Board of Appeal raised that question of its own motion.

72 In the third place, the applicant, having been informed that the intervener criticised it for failing to send the copy of the registration certificate, did not file that copy with its pleading of 10 December 2015 before the Opposition Division, but a new representation of the earlier mark in the colours red, white and black. Nor did the applicant file the copy of the registration certificate with its pleading of 21 October 2016 filed before the Board of Appeal.

73 Having regard to those factors and in any event, the Board of Appeal was therefore required to consider the question of proof of the existence of the earlier rights, notwithstanding the fact that the intervener referred to Rule 15 not Rule 19, and could do so without first having to inform the applicant thereof.

74 Indeed, in accordance with the case-law referred to in paragraphs 68 and 69, the Board of Appeal is empowered neither to provide guidance as regards the production of evidence nor to assist an opponent in proving the facts, evidence or arguments which it must produce to demonstrate the existence of its earlier right.

75 Moreover, in the light of the circumstances in which the intervener challenged the conditions of representation of the earlier mark, the applicant had full opportunity to provide all the evidence it wished to adduce, and in particular the registration certificate or another equivalent official document.

The fourth plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) and (4) of Regulation No 2868/95

77 The Board of Appeal found, in paragraph 32 of the contested decision, that, even if the evidence of the earlier mark had been adduced in accordance with Rule 19(2) of Regulation No 2868/95, the opposition would have to be rejected on another ground, namely the fact that the applicant had not demonstrated genuine use of the earlier mark for the goods and services for which that mark had been registered and on which the opposition had been based.

78 It is clear from the contested decision that the examination of genuine use was carried out as a second ground for rejection of the opposition, as is apparent from the use of the word ‘moreover’ at the beginning of paragraph 29 of the contested decision. The applicant also states that the Board of Appeal examined the issue of genuine use for the sake of completeness, which took the view that, even if proof of the earlier mark had been furnished, genuine use of the mark would, in any event, not have been proven.

79 It is apparent from the examination of the first and third pleas that the Board of Appeal did not err in finding that proof of the earlier mark had not been adduced, so that the opposition had to be rejected. It follows that, since proof of the earlier mark has not been adduced, there is no need to examine the fourth plea, alleging that the earlier mark was used for the goods and services for which registration was granted, since it is ineffective.

80 It follows from all the foregoing that the fourth plea in law must be rejected and the action dismissed in its entirety.

81 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Aldo Supermarkets v EUIPO - Aldi Einkauf (ALDI) (EU trade mark - Judgment) [2018] EUECJ T-359/17 (25 October 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T35917.html Cite as: EU:T:2018:720, [2018] EUECJ T-359/17, ECLI:EU:T:2018:720

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