Unilever v EUIPO - Technopharma (Fair & Lovely) (Judgment) [2017] EUECJ T-811/14 (17 February 2017)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark Fair & Lovely — Earlier national and Benelux word marks FAIR & LOVELY — Decision on the appeal — Article 64(1) of Regulation (EC) No 207/2009 — Right to be heard — Second sentence of Article 75 of Regulation No 207/2009 — Suspension of the administrative proceedings — Rule 20(7)(c) and Rule 50(1) of Regulation (EC) No 2868/95 — Legitimate expectations — Misuse of powers — Manifest errors of assessment)

Unilever NV, established in Rotterdam (Netherlands), represented by A. Fox, Solicitor,

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

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

Technopharma Ltd, established in London (United Kingdom), represented by C. Scott, Barrister,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 6 October 2014 (Case R 1004/2013‑4), relating to opposition proceedings between Technopharma and Unilever,

composed of H. Kanninen, E. Buttigieg (Rapporteur) and L. Calvo-Sotelo Ibáñez-Martín, Judges,

having regard to the application lodged at the Court Registry on 8 December 2014,

having regard to the response of EUIPO lodged at the Court Registry on 14 April 2015,

having regard to the response of the intervener lodged at the Court Registry on 1 April 2015,

1 On 24 September 2004 the applicant, Unilever NV, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

3 The goods in respect of which registration was sought are in Class 3 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 to the following description ‘Soaps; cleaning preparations; perfumery; essential oils; aromatherapy products; massage preparations; deodorants and antiperspirants; hair care preparations; non-medicated toilet preparations; bath and shower preparations; skin care preparations; oils, creams and lotions for the skin; shaving preparations; pre-shave and aftershave preparations; depilatory preparations; sun-tanning and sun protection preparations; cosmetics; make-up and make-up removing preparations; petroleum jelly; lip care preparations; talcum powder; cotton wool, cotton sticks; cosmetic pads, tissues or wipes; pre-moistened or impregnated cleansing pads, tissues or wipes; beauty masks, facial packs’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 23/2005 of 6 June 2005.

5 On 6 September 2005 the intervener, Technopharma Ltd, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.

6 The opposition was based on the application for the earlier EU word mark NEW YORK FAIR & LOVELY, lodged on 28 November 2002 under application number 2956498, for goods in Classes 3 and 5, and corresponding, for each of those classes, to the following description:

– Class 3: ‘Toilet preparations; preparations for the care of the skin, scalp and the body; preparations for toning the body; skin cleansers; dermatological preparations and substances; perfume, eau de cologne, toilet water; talcum powder; gels, foam and salts for the bath and the shower; soaps; body deodorants; cosmetics; creams, milks, lotions, gels and powders for the face, the body and the hands; sun care preparations; make-up preparations; aftershaves; shaving foams and creams; preparations for the hair; shampoo; hair lacquers; hair colouring and hair decolourant preparations; permanent waving and curling preparations; essential oils for personal use; dentifrices; anti-perspirants; deodorants for personal use’;

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

8 On 3 May 2006, the Opposition Division suspended the opposition proceedings on the grounds that the intervener’s EU trade mark application No 2956498, referred to above, was itself the subject matter of the earlier opposition proceedings No B 708091 based on the following earlier national trade marks of the applicant:

– the earlier Italian word mark FAIR & LOVELY, filed and registered on 4 June 1993 under number 846449 and duly renewed; and

– the earlier Benelux word mark FAIR & LOVELY, filed on 28 August 1998 and registered on 25 May 2001 under number 532378.

9 On 1 February 2010, the Opposition Division, in opposition proceedings with the reference B 708091, rejected the intervener’s EU trade mark application No 2956498 on the ground that there was a likelihood of confusion between that mark and the applicant’s earlier Italian word mark, referred to in paragraph 8 above. In addition, the Opposition Division took the view that the applicant had not provided proof of genuine use of the earlier Benelux word mark No 532378.

10 By decision of 26 October 2010 (Case R 510/2010‑2), the Second Board of Appeal upheld the above decision of the Opposition Division of 1 February 2010.

11 On 28 March 2011, the intervener, pursuant to Article 112 of Regulation No 207/2009, filed with EUIPO a request for conversion of EU trade mark application No 2956498 into a Benelux trade mark application and national trade mark applications in Germany, Spain, France and the United Kingdom.

12 On 29 June 2011, the Opposition Division resumed the proceedings and requested the intervener to indicate whether it was maintaining its opposition, which the intervener confirmed on 22 July 2011 by referring to the aforementioned Benelux and national trade mark applications.

13 On 22 August 2011, EUIPO suspended the opposition proceedings pending the outcome of the conversion requests.

14 On 9 September 2011, the opposition proceedings were resumed, the Benelux mark having been registered under number 201114 and the other earlier rights having become national trade mark applications in Germany, Spain, France and the United Kingdom.

15 On 26 January 2012, the applicant requested suspension of the opposition proceedings on the ground that it had filed an opposition to the intervener’s earlier UK trade mark application.

16 On 18 May 2012, the Opposition Division rejected that request for suspension on the ground that the opposition was also based on the other earlier national rights resulting from the conversion of EU trade mark application No 2956498.

17 By decision of 9 April 2013, the Opposition Division ruled that the intervener’s request for conversion of EU trade mark application No 2956498 satisfied the requirements laid down in Article 112 of Regulation No 207/2009, upheld the opposition in respect of all of the goods at issue, and found that there was a likelihood of confusion between the marks at issue, limiting itself, for reasons of procedural economy, to examining the opposition in relation to the earlier Spanish word mark No 2986212 resulting from the abovementioned conversion.

18 On 31 May 2013, the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division of 9 April 2013.

19 In its pleadings, submitted to the Board of Appeal on 7 August 2013, the applicant sought, principally, the cancellation of the Opposition Division’s decision of 9 April 2013 or, in the alternative, the suspension of the proceedings until a final decision had been taken in the cancellation actions brought against the intervener’s national trade marks, in particular the action brought against the earlier Spanish trade mark, on which the Opposition Division had based its decision.

20 In its pleadings of 30 January 2014, filed with the Board of Appeal on the following day, the applicant renewed its request for suspension of the proceedings on the basis of all the cancellation actions brought before the competent authorities and directed against the intervener’s trade marks resulting from the conversion, namely, those lodged on 8 August 2013 against the earlier Benelux trade mark No 201114, on 2 September 2013 against the earlier German trade mark, on 30 July 2013 against the earlier French trade mark, and on 30 January 2014 against the earlier Spanish trade mark. On that occasion, the applicant also submitted to the Board of Appeal, first, the decision of the German Patent and Trade Marks Office (Deutsches Patent- und Markenamt) of 16 December 2013, which annulled, without the intervener having filed a defence, the German trade mark on the ground that the application for registration had been filed in bad faith, and secondly, the decision of the UK Intellectual Property Office of 7 November 2013 refusing registration of the UK trade mark application resulting from the conversion on the ground of bad faith.

21 By decision of 6 October 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal, which it examined, invoking grounds of procedural economy, solely in the light of the intervener’s earlier Benelux trade mark No 201114, after finding that the intervener could reasonably rely on earlier national and Benelux rights resulting from the conversion of EU trade mark application No 2956498. The Board of Appeal found, first, that the applicant’s request for suspension of the proceedings had to be rejected given that the conditions for such a suspension had not been met in the present case. Secondly, it found, there was a likelihood of confusion between the marks at issue, in view of the identity and similarity of the goods concerned, of the visual, phonetic and conceptual similarity of the signs at issue, and of the average distinctiveness of the earlier mark.

– in the alternative, alter the contested decision by suspending the proceedings before the Board of Appeal until the final decision has been taken on the national cancellation actions relating to the earlier national marks and on the application relied on by the intervener in the Benelux countries, Germany, Spain, France and the United Kingdom;

– dismiss the application for alteration of the contested decision seeking suspension of the proceedings;

25 In support of the application for annulment, the applicant raises two pleas in law. The first plea alleges infringement of Article 64(1) and of the second sentence of Article 75 of Regulation No 207/2009, in that the Board of Appeal wrongly failed to rule on the appeal as it had been brought by the applicant, before carrying out a fresh assessment of the case. The second plea alleges infringement of Rule 20(7)(c) and of Rule 50(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 on the implementation of Regulation No 40/94 (OJ 1995 L 303, p. 1), in so far as the dismissal of the application for suspension of the opposition proceedings was vitiated by misuse of powers and manifest errors of assessment.

The first plea in law, alleging infringement of Article 64(1) and of the second sentence of Article 75 of Regulation No 207/2009

26 The applicant claims that the Board of Appeal misapplied Article 64(1) of Regulation No 207/2009, in that it conducted a fresh examination of the opposition on the basis of the intervener’s earlier Benelux trade mark No 201114, without examining beforehand, as it ought to have done, whether or not the appeal brought by the applicant against the decision of the Opposition Division, in so far as that decision was based solely on the earlier Spanish mark, was well founded. In doing so, the Board of Appeal also disregarded the principle of legitimate expectations and misused its powers.

27 The applicant also alleges infringement of the second sentence of Article 75 of Regulation No 207/2009, in so far as it could not reasonably foresee that the earlier Benelux trade mark No 201114 would play a role in the contested decision, when that mark did not play any role in the decision of the Opposition Division, and in so far as the Board of Appeal did not give it the opportunity to set out its position with regard to that mark.

29 It must be noted at the outset that, in the present action, the applicant does not challenge the contested decision, either in so far as it held that the opposition based on the applications and registrations resulting from the conversion of the intervener’s EU trade mark application No 2956498 was admissible, or in so far as it concluded that there was a likelihood of confusion between the applicant’s EU trade mark application and the earlier Benelux trade mark No 201114 relied on by the intervener. By its first plea in law, the applicant criticises the Board of Appeal for having misapplied Article 64(1) and the second sentence of Article 75 of Regulation No 207/2009 by dismissing the appeal on the basis of that earlier Benelux trade mark, instead of first re-examining the decision of the Opposition Division in the light of the earlier Spanish trade mark on which that decision was based.

31 First of all, it is clear from Article 64(1) of Regulation No 207/2009 that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on it and that, in doing so, it may, inter alia, ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is to say, give judgment itself on the opposition by either rejecting it or declaring it to be well founded, thereby either upholding or annulling the decision taken at first instance before EUIPO. Thus, it is apparent from that provision that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see judgment of 9 December 2014, DTL Corporación v OHIM — Vallejo Rosell (Generia), T‑176/13, not published, EU:T:2014:1028, paragraph 30 and the case-law cited, confirmed on appeal by order of 8 September 2015, DTL Corporación v OHIM, C‑62/15 P, not published, EU:C:2015:568, paragraph 35).

32 Furthermore, pursuant to the second sentence of Article 75 of Regulation No 207/2009, EUIPO’s decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision affirms, in EU trade mark law, the general principle of protection of the rights of the defence. In accordance with that general principle, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity effectively to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision (see, to that effect, judgment of 9 December 2014, Generia, T‑176/13, not published, EU:T:2014:1028, paragraphs 27 to 29 and the case-law cited).

33 First, it is common ground that the intervener had based the opposition on all the national and Benelux trade mark applications resulting from the conversion of its earlier, rejected, EU trade mark application, with the result that those marks, including the earlier Benelux trade mark No 201114, were the subject of the dispute before the Opposition Division and the arguments exchanged between the parties.

34 Secondly, it is clear from the applicant’s pleadings lodged on 7 August 2013 that it based its action, before both the Opposition Division and the Board of Appeal, on the challenge to all the earlier national marks relied on by the intervener, and that it did not present specific arguments in relation to each mark, but relied generally, and therefore indiscriminately, on all the earlier marks (see, to that effect, judgment of 24 November 2015, riha WeserGold Getränke v OHIM – Lidl Stiftung (WESTERN GOLD), T‑278/10 RENV, EU:T:2015:876, paragraph 61). It is also clear from the applicant’s pleadings of 30 January 2014 that, through those pleadings, the applicant notified the Board of Appeal of the filing of cancellation actions against all of the earlier marks and that those pleadings also do not contain any specific arguments in relation to the earlier Spanish mark, the applicant having merely indicated that the action for cancellation of that mark had been drawn up and filed in August and September 2013, respectively, and that it would diligently pursue that action.

35 Since the opposition was thus based on all of the earlier marks, the Board of Appeal had, under Article 64(1) of Regulation No 207/2009, the power to carry out a new, full examination of the merits of the opposition, in particular, with regard to the earlier Benelux mark No 201114, by conducting a new examination of the likelihood of confusion, for the purposes of Article 8(1)(b) of Regulation No 207/2009 (judgments of 9 December 2014, Generia, T‑176/13, not published, EU:T:2014:1028, paragraph 31, and of 24 November 2015, WESTERN GOLD, T‑278/10 RENV, EU:T:2015:876, paragraph 61).

36 As EUIPO contends, it is not clear, either from the provisions relied on by the applicant or from the case-law, that the Board of Appeal is required to ask the parties for their observations on the existence of a likelihood of confusion between the mark applied for and one of the earlier marks if, as in the present case, the Board of Appeal bases its assessment of the likelihood of confusion on an earlier mark which the Opposition Division did not take into account but which had been validly relied on in support of that opposition (judgment of 15 January 2013, Lidl Stiftung v OHIM — Lactimilk (BELLRAM), T‑237/11, EU:T:2013:11, paragraph 27).

37 Nor can the applicant allege infringement of the right to be heard, given that it had an effective opportunity to present its observations on the earlier Benelux mark No 201114 both before the Opposition Division, following the intervener’s conversion of EU trade mark application No 2956498 to national and Benelux marks, and before the Board of Appeal. In that context, the second sentence of Article 75 of Regulation No 207/2009 does not impose any obligation on the Board of Appeal to inform the parties of its intention to take into account, when assessing the likelihood of confusion, one or all of the earlier marks upon which the opposition is based (judgment of 15 January 2013, BELLRAM, T‑237/11, EU:T:2013:11, paragraph 34).

38 Finally, that assessment cannot be called into question by the applicant’s other arguments based on infringement of the principle of legitimate expectations and misuse of powers.

39 According to settled case-law, the right to rely on the principle of legitimate expectations extends to any person in a situation where an EU institution has caused him or her to have justified expectations. A person may not plead infringement of this principle unless he or she has been given precise assurances by the administration (see judgment of 14 June 2012, Seven Towns v OHIM(Representation of seven squares of different colours), T‑293/10, not published, EU:T:2012:302, paragraph 38 and the case-law cited).

40 The applicant had no legitimate expectations that the Board of Appeal would give a ruling on the basis of the earlier Spanish mark, if only because, as has been pointed out above, its appeal was based on a challenge to all of the earlier national and Benelux marks resulting from the intervener’s conversion of EU trade mark application No 2956498 and because, as is clear from established case-law, the Board of Appeal was entitled to conduct a new examination of the opposition on the basis of all the earlier marks relied on by the intervener, including the earlier Benelux mark No 201114.

41 Furthermore, it is settled case-law that a decision may amount to a misuse of powers only where it appears, on the basis of objective, relevant and consistent factors, to have been taken in order to achieve an end other than that stated (see judgment of 15 November 2011, Hrbek v OHIM — Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT), T‑434/10, not published, EU:T:2011:663, paragraph 22 and the case-law cited).

42 The applicant, however, has not adduced any evidence to substantiate a misuse of powers. On the contrary, it is clear from the foregoing that the Board of Appeal had to conduct a fresh examination of the opposition on the basis of the marks resulting from the intervener’s conversion of EU trade mark application No 2956498, which undeniably included the earlier Benelux mark No 201114, the existence of which was established and on which the Board, for reasons of economy of procedure, could rely in order to dismiss the appeal.

The second plea in law, alleging infringement of Rule 20(7)(c) and of Rule 50(1) of Regulation No 2868/95

44 The applicant claims that the Board of Appeal misapplied Rule 20(7)(c) and Rule 50(1) of Regulation No 2868/95 in deciding to dismiss its application to have the proceedings suspended. The applicant submits, in particular, that that decision is vitiated by misuse of powers and manifest errors of assessment.

45 The applicant states that, in the statement of reasons for the application submitted to the Board of Appeal on 7 August 2013, it applied for a suspension of the proceedings until a ruling had been given, in particular, on the action for cancellation of the Spanish trade mark relied on by the intervener and that, annexed to its pleadings of 30 January 2014, it lodged with EUIPO a copy of the statement of grounds for cancellation submitted in Spain, Benelux, France and Germany, as well as all the evidence adduced during the course of the cancellation action brought in Germany, evidence which was essentially identical to that relied on in the other actions, a copy of the decision delivered by the German trade mark office on 16 December 2013 cancelling registration of the intervener’s German mark on the ground that the application had been filed in bad faith, and a copy of the decision of the UK Intellectual Property Office of 7 November 2013 refusing, on the ground of bad faith, registration of the UK trade mark resulting from the conversion.

46 According to the applicant, there thus existed a real and substantial likelihood that the action for cancellation of the Spanish trade mark and the actions brought against the French and Benelux trade marks, also based on bad faith, would similarly be upheld, as shown in particular by the decision of 29 June 2015 handed down by the Spanish court in relation to the Spanish mark relied on by the intervener. In ruling solely on the basis of the status of the action seeking cancellation of the earlier Benelux trade mark No 201114, although the decision of the Opposition Division was based on the earlier Spanish trade mark, and although the Board of Appeal had evidence that all of the actions were based on bad faith, as the UK Intellectual Property Office had found in its decision of 7 November 2013, the Board of Appeal misused its powers.

47 Furthermore, contrary to what the intervener submits, the applicant claims to have acted diligently in that it filed a cancellation action in France on 30 July 2013 and, in accordance with Rule 20(7) of Regulation No 2868/95, its application to have proceedings suspended was made in good time. In any event, the contested decision is not based on the alleged delay in bringing the various cancellation actions against the earlier national marks relied on.

48 According to the applicant, the decision dismissing the application to have the proceedings before the Board of Appeal suspended is based, moreover, on manifest errors. The applicant observes that it expressly referred in its pleadings of 7 August 2013 to the cancellation proceedings brought against the earlier Benelux, French and Spanish marks and that it had filed, as an annex to its pleadings of 30 January 2014, a full copy of the application made in the Netherlands for cancellation of the Benelux trade mark, the statement of reasons and their English-language translation. In taking the view that the cancellation action brought against the Benelux trade mark relied on new pleas in law, that is to say, the existence of a well-known trade mark, the contested decision was also erroneous. Moreover, in taking the view that the action against the Benelux trade mark could not succeed because the applicant’s earlier trade mark had not been put to genuine use there, the contested decision was also erroneous in that genuine use is relevant only in cancellation actions based on earlier marks for which the period of grace had expired, and it does not apply to actions based on bad faith. Finally, according to the applicant, it is not necessary that the outcome of the action against the Benelux trade mark could be the subject of a ‘reliable prediction’ in order to justify suspension of the proceedings, as ‘reasonable’ grounds for cancellation of that mark, based on the decision of the UK Intellectual Property Office of 7 November 2013, are sufficient, and a certain degree of uncertainty is inevitable.

49 EUIPO submits that the decision to suspend the proceedings before the Board of Appeal is a measure of organisation of procedure which does not qualify as an essential procedural requirement within the meaning of Article 65(2) of Regulation No 207/2009 and that, in any event, it is merely an option based on the wide discretion which the Board of Appeal enjoys for the purpose of assessing the likelihood that the case will be upheld on the merits in the context of national proceedings, judicial review being confined to establishing that no manifest error of assessment or misuse of powers has occurred.

50 According to EUIPO, the decisions to cancel the German and UK marks relied on by the applicant did not require the Board of Appeal to suspend the proceedings, given that, first, those decisions will, depending on the circumstances, become final only after a number of years of litigation before the courts and, second, the fact that the same ground for cancellation is relied on in the actions brought against the various national marks at issue does not prejudice the outcome of the proceedings under way before each of the national courts seised.

51 EUIPO submits that the Board of Appeal was required to examine the decision of the Opposition Division on the basis of each of the earlier rights invoked by the intervener, bearing in mind that that Board had to dismiss the action since such a dismissal was recognised as being founded on the basis of one of those earlier rights, that is to say, in the present case, the earlier Benelux trade mark No 201114. As was indicated in the contested decision, according to the submissions of EUIPO, the applicant had not adduced evidence of use of its own Benelux trade mark, for the purposes of Article 11(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), and the evidence adduced did not reliably indicate the outcome of the action seeking cancellation of the earlier Benelux trade mark No 201114. EUIPO adds that, even if the Board of Appeal had not properly taken account of the information provided by the applicant as regards the first plea in law raised and the legal proceedings under way against registration of the earlier Benelux trade mark No 201114, those errors cannot, in any event, be classified as manifest errors of assessment.

52 Finally, EUIPO maintains that the decision not to suspend the opposition proceedings is based on due account being taken of the interests of the intervener and the principle of sound administration, and that the applicant has not provided any evidence to demonstrate that that decision constitutes a misuse of powers.

53 The intervener submits that the Opposition Division took its decision eight years after the application had been made. The Board of Appeal, when exercising its discretion, had to weigh up the interests of the parties concerned. To grant the application for suspension of proceedings at such a late stage would be disproportionate and unjust as regards the intervener, as the applicant did not act with due diligence in that it was late in bringing its applications for cancellation of the intervener’s earlier marks. Moreover, the claims of bad faith were rejected on appeal by the competent UK authorities on 9 December 2014, an outcome which it would also be reasonable to expect from the other national authorities seised by the applicant.

54 It should be recalled at the outset that the Board of Appeal has a broad discretion on whether or not to suspend proceedings. Rule 20(7)(c) of Regulation No 2868/95, applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, illustrates that broadness of discretion by providing that EUIPO may suspend opposition proceedings where a suspension is appropriate in the circumstances. Suspending proceedings thus remains optional for the Board of Appeal, which will do so only if it considers it appropriate. Proceedings before the Board of Appeal are therefore not automatically suspended simply because a party has requested a suspension (see, to that effect, judgment of 21 October 2015, Petco Animal Supplies Stores v OHIM — Gutiérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 31 and the case-law cited).

55 It must also be borne in mind that the fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (see, to that effect, judgment of 21 October 2015, PETCO, T‑664/13, EU:T:2015:791, paragraph 32 and the case-law cited).

56 In that regard, it is evident from the case-law that, in exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose EU mark is contested, but also those of the other parties. The decision whether or not to suspend the proceedings must follow upon a balancing of the competing interests (see, to that effect, judgment of 21 October 2015, PETCO, T‑664/13, EU:T:2015:791, paragraph 33 and the case-law cited).

57 In the first place, as regards the complaint alleging misuse of power, the applicant criticises the Board of Appeal for having refused to suspend the proceedings on the basis of the status of the cancellation action brought in the Netherlands against the earlier Benelux mark No 201114, whereas the decision of the Opposition Division was based on the earlier Spanish trade mark and the Board of Appeal had evidence that all of the actions, including that brought against the earlier Benelux mark, were based on bad faith, the existence of which had been established in the decision of the UK Intellectual Property Office of 7 November 2013.

58 However, as is clear from paragraphs 31 to 42 above, the Board of Appeal was entitled to carry out a fresh and full examination of the merits of the opposition and to limit that examination, for reasons of procedural economy, to the earlier Benelux mark No 201114 for the purpose of dismissing the appeal. Furthermore, it is quite clear from the applicant’s pleadings of 30 January 2014 that the applicant applied to the Board of Appeal to suspend the opposition proceedings on the basis of the challenge, not only to the earlier Spanish mark, but to all of the earlier national and Benelux marks claimed by the intervener. The decision of the Board of Appeal not to suspend the proceedings, in so far as they were based on the earlier Benelux mark No 201114, after concluding, following a prima facie examination of the likelihood of success of the application for cancellation of that mark, that that likelihood had not been established to the requisite standard, does not therefore appear to be vitiated by any misuse of powers.

59 The applicant’s objection that the Board of Appeal was aware that, by decision of 7 November 2013, the UK Intellectual Property Office had rejected the application for registration of the intervener’s earlier mark in the United Kingdom on the ground that that application had been brought in bad faith, cannot support an allegation of misuse of powers, if for no other reason than that such a situation is not, on its own, capable of prejudging the outcome of the cancellation actions brought against the Benelux, Spanish and French marks, even if those actions were also based on the intervener’s bad faith.

60 In the light of the foregoing, and in the absence of any indication that the Board of Appeal had taken its decision for any purpose other than to ensure the proper conduct of the proceedings by taking into consideration the various interests concerned, the applicant has not demonstrated that the decision rejecting the application for suspension of the proceedings was vitiated by a misuse of powers on the basis that the earlier Benelux mark No 201114 alone was taken into account.

61 In the second place, as regards the complaint alleging the existence of manifest errors of assessment, it should be recalled, at the outset, that it has been held that, even if it were demonstrated that an action was pending before a national court in which the earlier trade mark on which a contested decision was based was under challenge, that fact would not be a sufficient basis, in itself, for categorising the Board of Appeal’s refusal to suspend proceedings as a manifest error of assessment (judgment of 25 November 2014, Royalton Overseas v OHIM — S.C. Romarose Invest (KAISERHOFF), T‑556/12, not published, EU:T:2014:985, paragraph 33), as was rightly pointed out in paragraph 28 of the contested decision.

62 In the present case, however, it must be noted that the contested decision is vitiated by manifest errors of assessment, in particular where the Board of Appeal stated in paragraph 31 of the contested decision that, apart from the mere mention of proceedings to cancel the intervener’s earlier Benelux mark No 201114 before a Netherlands court, the intervener’s pleadings of 30 January 2014, referred to above, do not contain any explanation of the grounds or legal bases of such proceedings. In order to arrive at that conclusion, the Board of Appeal stated that the applicant had submitted a copy of a summons against the intervener, the effects and legal value of which had not been established, that the evidence on file did not make it possible to establish with certainty whether the case had been pursued before the Netherlands court in question or whether it was still pending when the contested decision was adopted on 6 October 2014, and that, in any event, it was clear from that summons that the action ‘would be based on other, new, grounds’ which had not yet been considered in the proceedings before EUIPO.

63 As the applicant rightly stated, apart from the fact that, in its pleadings of 7 August 2013, it had already referred to proceedings, due to commence in September 2013, to have the earlier Benelux mark cancelled, the applicant’s pleadings of 30 January 2014 specifically refer to the various actions brought before the competent national authorities, including the action by way of a summons before the Netherlands court against the intervener’s earlier Benelux mark No 201114. Those pleadings of 30 January 2014 contain, more particularly, as an attachment, a copy of the summons, dated 8 August 2014, to appear before the District Court of The Hague on 18 September 2013, served as an originating application, as EUIPO acknowledges, in accordance with Regulation (EC) No 1393/2007 of the European Parliament and of the Council of 13 November 2007 on the service in the Member States of judicial and extrajudicial documents in civil or commercial matters (‘service of documents’) and repealing Council Regulation (EC) No 1348/2000 (OJ 2007 L 324, p. 79), and the statement of grounds for cancellation, in Dutch and English, including the ground alleging bad faith. Furthermore, it is expressly stated in paragraph 7 of the pleadings of 30 January 2014 that all the national actions are based on bad faith.

64 Contrary to what the Board of Appeal asserts, the applicant, in doing so, provided evidence both of the existence of cancellation proceedings before the competent Netherlands court against the intervener’s earlier Benelux mark No 201114 and of the fact that the bad faith of the registration was relied on as the basis for those proceedings. In that context, the applicant cannot validly be criticised for not having provided other evidence in its pleadings of 30 January 2014 in order to demonstrate that those proceedings were still pending on 6 October 2014, the date on which the contested decision was adopted.

65 On the basis of the erroneous assumptions identified in paragraph 63 above, the Board was also wrong to take the view in paragraph 31 of the contested decision that, by granting the application for suspension of the proceedings in question, it would render the abovementioned decision of the Second Board of Appeal of 26 October 2010 (Case R 510/2010‑2), ‘devoid of purpose’, a decision which was adopted in opposition proceedings between the intervener and the applicant and from which it is clear that the applicant had failed to prove genuine use of its earlier Benelux word mark No 532378, Fair & Lovely. As has been pointed out in paragraphs 63 and 64 above, the cancellation proceedings brought by the applicant before the competent Netherlands court against the registration of the intervener’s earlier Benelux mark No 201114 are based on bad faith, and not on the existence of earlier rights.

66 According to EUIPO, such errors of assessment, supposing them to be proved, are in any event not manifest, in that the applicant’s predictions as to the fate of the intervener’s earlier rights remained speculative in any event.

67 However, those errors, in themselves, could have prevented the Board of Appeal from taking into consideration all the factors characterising the applicant’s situation, with the result that, when appraising the interests of the applicant, the Board of Appeal did not address the whole picture and, accordingly, was not in a position to weigh properly the various interests involved (see, to that effect, judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 49) and, in particular, to evaluate correctly the chances of success of the cancellation proceedings being brought in the Netherlands against the intervener’s earlier Benelux mark No 201114, on which the Board of Appeal relied in order to dismiss the application for suspension of the proceedings before it.

68 That conclusion is not undermined by the fact, advanced for the first time by the intervener in response to a question from the Court and not mentioned by the Board of Appeal in the contested decision, that the action seeking cancellation of the earlier Benelux mark No 201114 was brought by Unilever Plc and not by the applicant itself, since it has been established that that action could have resulted in the cancellation of the mark applied for due to the bad faith on the part of the party applying for that mark.

69 Finally, with regard to the various national decisions subsequent to the contested decision, which were relied on, first, by the intervener in its response and in its letter lodged at the Court Registry on 17 August 2016, that is to say, respectively, the decision of the UK Intellectual Property Office of 9 December 2014 annulling the decision to refuse registration of the intervener’s earlier United Kingdom mark on the basis of bad faith and the decision of the District Court of The Hague of 13 July 2016 rejecting the application for cancellation of the intervener’s earlier Benelux mark No 201114 brought by Unilever, and secondly, by the applicant in its reply and in its letter lodged at the Court Registry on 12 September 2016, that is to say, respectively, the decision of the Spanish court of 29 June 2015 cancelling registration of the intervener’s earlier Spanish mark on the basis of bad faith and the decision of the Paris Regional Court of 19 November 2015 cancelling registration and renewal of the intervener’s earlier French mark, also on the basis of bad faith, suffice it to state that the review of the legality of the contested decision must be conducted having regard to the legal and factual context as it has been brought before the Board of Appeal (judgment of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17), with the result that those decisions cannot be taken into consideration for the purposes of the review of legality of the contested decision.

70 Having regard to all of the foregoing considerations, the present plea must be upheld and the contested decision must accordingly be annulled.

71 Inasmuch as the principal claim seeking annulment of the contested decision has been upheld, there is no need to rule on the second head of claim, relating to alteration of that decision, put forward by the applicant as an alternative claim, and the admissibility of which is disputed by EUIPO.

72 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. Under Article 134(2) of those Rules, where there is more than one unsuccessful party, the Court is to decide how the costs are to be shared.

73 Since EUIPO and the intervener have been unsuccessful in the present case, they must, in accordance with the form of order sought by the applicant, be ordered to bear their own costs and to pay the costs incurred by the applicant.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 October 2014 (Case R 1004/2013‑4) concerning opposition proceedings between Technopharma Ltd et Unilever NV;

2. Orders EUIPO to bear its own costs and to pay half of the costs incurred by Unilever;

3. Orders Technopharma to bear its own costs and to pay half of the costs incurred by Unilever.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Unilever v EUIPO - Technopharma (Fair & Lovely) (Judgment) [2017] EUECJ T-811/14 (17 February 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T81114.html Cite as: [2017] EUECJ T-811/14, ECLI:EU:T:2017:98, EU:T:2017:98

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