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Corte di giustizia UEsentenza

Corte di giustizia UE n. 1436/2015

ECLI:EU:C:2015:157
Testo integrale del provvedimento

Testo integrale del provvedimento

[OSCURATO:PERSONA] ([OSCURATO:PERSONA])

26 February 2015 ( * ) (Appeal — [OSCURATO:PERSONA] trade mark — Word mark [OSCURATO:PERSONA] — [OSCURATO:PERSONA] by the owner of the well-known trade mark, company name and national logos including the word elements ‘[OSCURATO:PERSONA]’ — Partial rejection of the opposition — Admissibility of evidence adduced for the first time before the [OSCURATO:PERSONA] — Likelihood of confusion)

[OSCURATO:PERSONA] C‑414/14 P,

APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 2 September 2014,

[OSCURATO:PERSONA],

established in [OSCURATO:PERSONA] (Portugal), represented by G. [OSCURATO:PERSONA], G. [OSCURATO:PERSONA] and P. [OSCURATO:PERSONA], advogados, appellant, the other parties to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM), defendant at first instance,

[OSCURATO:PERSONA],

residing in Oeiras (Portugal), intervener at first instance,

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]),

composed of A. Ó Caoimh, President of the [OSCURATO:PERSONA], C. Toader (Rapporteur) and C.G. Fernlund, Judges,

[OSCURATO:PERSONA]: P. [OSCURATO:PERSONA],

[OSCURATO:PERSONA]: A. [OSCURATO:PERSONA],

having regard to the decision taken, after hearing the [OSCURATO:PERSONA], to give a decision on the action by reasoned order, pursuant to [OSCURATO:PERSONA] 181 of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA] of Justice, makes the following

[OSCURATO:PERSONA]

1 By its appeal, the [OSCURATO:PERSONA] (‘FCG’) asks the [OSCURATO:PERSONA] to set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] in

[OSCURATO:PERSONA]

v

OHIM

—

[OSCURATO:PERSONA] ([OSCURATO:PERSONA])

(T‑541/11, EU:T:2014:584, ‘the judgment under appeal’) dismissing its application for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM) (‘the [OSCURATO:PERSONA] of Appeal’) of 15 July 2011 ([OSCURATO:PERSONA] R 1436/2010-2), relating to opposition proceedings between FCG and [OSCURATO:PERSONA] (‘the contested decision’).

Legal context 2 [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009, repealed and replaced [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the [OSCURATO:PERSONA] trade mark (OJ 1994 L 11, p. 1).

In accordance with [OSCURATO:PERSONA] 166 of [OSCURATO:PERSONA] 207/2009, references to [OSCURATO:PERSONA] 40/94 are to be construed as references to [OSCURATO:PERSONA] 207/2009 and are to be read in accordance with the correlation table set out in Annex II to that regulation. 3 [OSCURATO:PERSONA] 8 of [OSCURATO:PERSONA] 207/2009 provides: ‘1.

Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: … (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

2. “Earlier trade marks” within the meaning of paragraph 1 means: … (c) trade marks which, on the date of application for registration of the [OSCURATO:PERSONA] trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the [OSCURATO:PERSONA] trade mark, are well known in a [OSCURATO:PERSONA], in the sense in which the words “well known” are used in [OSCURATO:PERSONA] 6 bis of the [OSCURATO:PERSONA]. …

4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the [OSCURATO:PERSONA] legislation or the law of the [OSCURATO:PERSONA] governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the [OSCURATO:PERSONA] trade mark, or the date of the priority claimed for the application for registration of the [OSCURATO:PERSONA] trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier [OSCURATO:PERSONA] trade mark the trade mark has a reputation in the [OSCURATO:PERSONA] and, in the case of an earlier national trade mark, the trade mark has a reputation in the [OSCURATO:PERSONA] concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’ 4 [OSCURATO:PERSONA] 135(4) of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA] provides that the parties’ pleadings may not change the subject-matter of the proceedings before the [OSCURATO:PERSONA] of Appeal.

Background to the dispute 5 On 17 November 2005, [OSCURATO:PERSONA] filed an application for registration of a [OSCURATO:PERSONA] trade mark with OHIM pursuant to [OSCURATO:PERSONA] 40/94. 6 The mark for which registration was sought is the word sign ‘[OSCURATO:PERSONA]’. 7 The goods and services in respect of which registration of the mark was sought are in Classes 4, 33, 35 to 37, 41, 42 and 44 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of [OSCURATO:PERSONA] of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: – Class 4: ‘Fuels, petroleum (raw or refined), industrial oils and grease and lubricants’; – Class 33: ‘Alcoholic beverages (except beers)’; – Class 35: ‘Consultancy, advice on the provision of services in the field of management (business management); institutional support and support networks and macro-economics and information technologies, all related to business’; – Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’; – Class 37: ‘Service stations (petrol stations)’; – Class 41: ‘Educational services’; – Class 42: ‘Technical consultancy in the field of agriculture, livestock, forestry, game, and nature conservation and rural development; development of studies and projects, consultancy, consultancy in the field of engineering, in particular for the manufacturing, processing, petroleum and gas, and energy industries, environment, transport, public works, engineering work and surveys on project management, quality, maintenance and materials, industrial security and recuperation of installations, in particular quality management and building enterprises’; and – Class 44: ‘Healthcare’. 8 [OSCURATO:PERSONA] trade mark application was published in [OSCURATO:PERSONA] 7/2007 of 19 February 2007. 9 On 18 May 2007, FCG filed a notice of opposition pursuant to [OSCURATO:PERSONA] 42 of [OSCURATO:PERSONA] 40/94 (now [OSCURATO:PERSONA] 41 of [OSCURATO:PERSONA] 207/2009) against registration of the mark applied for in respect of all the goods and services referred to in paragraph 7 above. 10 The opposition was based on the following earlier well-known mark and rights: – the well-known mark [OSCURATO:PERSONA], covering the following goods and services: ‘Arts (plastic arts and music); charity (health and human development); science (research and promotion); education (support and development); technical and management services related to the oil industry’ (‘the well-known mark’); – the company name [OSCURATO:PERSONA], used for all of the areas listed in the first indent above (‘the company name’); – the Portuguese registrations No 5351 and No 5352 (‘the logos’), covering all of the goods and services listed in the first indent above and consisting of the following graphic sign: 11 The grounds relied on in support of the opposition were those set out in [OSCURATO:PERSONA] 8(1)(b) and (4) of [OSCURATO:PERSONA] 40/94 (now [OSCURATO:PERSONA] 8(1)(b) and (4) of [OSCURATO:PERSONA] 207/2009). 12 By decision of 28 May 2010, the [OSCURATO:PERSONA] of OHIM (‘the [OSCURATO:PERSONA]’) partially upheld the opposition in so far as it was based on [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. [OSCURATO:PERSONA] found that FCG had established that the well-known trade mark existed with regard to arts (plastic arts and music), charity (health and human development) and education (support and development) and that consequently there was a likelihood of confusion between the well-known mark and the mark applied for with regard to the educational services within Class 41 of the [OSCURATO:PERSONA] and to healthcare within Class 44 of that [OSCURATO:PERSONA]. 13 By contrast, the [OSCURATO:PERSONA] rejected the opposition by FCG in so far as it was based on [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009.

In that regard, first, the [OSCURATO:PERSONA] considered that FCG had not provided evidence that the logos met all of the conditions set out in [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009, in particular the requirement that the signs to which this provision refers must give their proprietors the right to oppose the use of a more recent mark.

Secondly, the [OSCURATO:PERSONA] took the view that FCG had also failed to submit evidence that the company name had been used, before the date on which the application for registration of the mark [OSCURATO:PERSONA] was lodged, in the field of science (research and promotion) or technical and management services related to the oil industry. 14 On 27 July 2010, FCG filed an appeal with OHIM, pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009, against the decision of the [OSCURATO:PERSONA] of 28 May 2010. 15 By the contested decision, the [OSCURATO:PERSONA] of Appeal partially upheld FCG’s appeal, in respect of services relating to development of studies and projects, as well as to consultancy, within Class 42 of the [OSCURATO:PERSONA]. [OSCURATO:PERSONA] of Appeal found, pursuant to [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009, that for these services there was a likelihood of confusion between the company name and the mark at issue, as FCG had submitted evidence of use of the company name in the field of biomedicine before the date on which the application for registration of that mark was filed. 16 By contrast, the [OSCURATO:PERSONA] of Appeal found, as the [OSCURATO:PERSONA] had done, that FCG had not proved the use of the earlier mark or the company name in particular as regards technical and management services related to the oil industry.

Moreover, the [OSCURATO:PERSONA] of Appeal upheld the finding of the [OSCURATO:PERSONA] that FCG had not submitted evidence that the logos gave their proprietor the right to prohibit the use of a more recent mark.

The procedure before the [OSCURATO:PERSONA] and the judgment under appeal 17 By application lodged at the Registry of the [OSCURATO:PERSONA] on 10 October 2011, FCG brought an action for the annulment of the contested decision in so far as the [OSCURATO:PERSONA] of Appeal had not upheld its opposition in its entirety.

In support of its action, FCG relied on a single plea in law, alleging infringement of [OSCURATO:PERSONA] 8(1)(b), (4) and (5) of [OSCURATO:PERSONA] (EC) No 207/2009 and [OSCURATO:PERSONA] 16(3) of the [OSCURATO:PERSONA] on [OSCURATO:PERSONA]-[OSCURATO:PERSONA] of [OSCURATO:PERSONA] (TRIPs), which constitutes Annex 1C to the [OSCURATO:PERSONA] establishing the [OSCURATO:PERSONA] (WTO) signed at Marrakesh on 15 April 1994 and approved by [OSCURATO:PERSONA] 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the [OSCURATO:PERSONA], as regards matters within its competence, of the agreements reached in the [OSCURATO:PERSONA] multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1). 18 In the first place, in the judgment under appeal, the [OSCURATO:PERSONA] ruled on pleas of inadmissibility raised by OHIM relating to certain heads of claim in the application. 19 In this regard, referring, in paragraph 27 of the judgment under appeal, to [OSCURATO:PERSONA] 135(4) of its [OSCURATO:PERSONA] of Procedure and the relevant case-law, the [OSCURATO:PERSONA] rejected the single plea as inadmissible in so far as it alleged infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009 and [OSCURATO:PERSONA] 16(3) of the agreement referred to in paragraph 17 above.

In paragraph 28 of the judgment under appeal, that [OSCURATO:PERSONA] held that, as FCG had not relied on infringement of those provisions either before the [OSCURATO:PERSONA] or before the [OSCURATO:PERSONA] of Appeal, its arguments alleging infringement of those provisions and alleging that the reputation of its earlier rights should have led the [OSCURATO:PERSONA] of Appeal to uphold its opposition in its entirety, including in respect of the dissimilar goods and services, had to be rejected as inadmissible. 20 In paragraph 29 of the judgment under appeal, the [OSCURATO:PERSONA] held that the evidence adduced by FCG for the first time before it in support of the arguments referred to in paragraph 19 above should likewise be rejected as inadmissible.

Paragraph 25 of the judgment under appeal indicated that that evidence comprised a number of Portuguese judicial decisions which had become final. 21 In the second place, as to the substance, the [OSCURATO:PERSONA] first recalled that FCG’s opposition to the registration of the mark at issue had already been partially upheld on the basis of [OSCURATO:PERSONA] 8(1)(b) and (4) of [OSCURATO:PERSONA] 207/2009, FCG having proved the existence of the well-known mark as regards arts (plastic arts and music), charity (health and human development) and education (support and development) and also the use of the company name in the field of biomedicine.

It went on to demarcate the scope of the dispute brought before it as follows: ‘35 It is necessary to uphold the [OSCURATO:PERSONA] of Appeal’s assessments in the contested decision, which are, moreover, not disputed by [FCG], as regards the definition of the relevant public, the finding that the signs at issue are similar, the finding that there is no similarity between the goods and services covered by the mark [at issue] and those in respect of which the [OSCURATO:PERSONA] of Appeal found that the use of the well-known mark and the company name had been proved and the finding that [FCG] had not established that the logos satisfied the conditions set out in [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009. 36 By contrast, it is necessary to examine the arguments by which [FCG] seeks to show that the [OSCURATO:PERSONA] of Appeal should have upheld its opposition to a greater extent. 37 Consequently, given that it has been held … that [FCG] was not entitled to submit, for the first time before the [OSCURATO:PERSONA], either arguments alleging that the reputation of its earlier rights should have precluded registration of the mark applied for irrespective of the goods and services in respect of which the existence of those earlier rights had been proved or items of evidence that were not submitted in the course of the proceedings before OHIM, it is necessary to examine whether [FCG] is justified in claiming that, having regard to the items of evidence that were submitted in due time, the [OSCURATO:PERSONA] of Appeal erred in finding that the use of the well-known mark and the company name had not been proved as regards technical and management services related to the oil industry.’ 22 With regard to FCG’s argument that the [OSCURATO:PERSONA] of Appeal had erred in finding that the use of the well-known mark and the company name had not been proved as regards technical and management services related to the oil industry, the [OSCURATO:PERSONA] held, in paragraph 37 of the judgment under appeal, as a preliminary point, that no account should be taken of evidence which FCG had submitted for the first time before it and which FCG acknowledged not having submitted to the [OSCURATO:PERSONA] of Appeal. 23 Next, the [OSCURATO:PERSONA] found that, in its appeal, FCG had criticised generally the assessment of the evidence undertaken by the [OSCURATO:PERSONA] and the [OSCURATO:PERSONA] of Appeal.

In this respect, the [OSCURATO:PERSONA] observed, in paragraph 41 of the judgment under appeal, that the [OSCURATO:PERSONA] of Appeal had concluded on the basis of a number of items of evidence that FCG was carrying out a commercial activity in the oil industry sector through its subsidiary P and that the possibility could not be excluded that consumers might establish a link between the company name and the oil sector. [OSCURATO:PERSONA] added that, by contrast, the [OSCURATO:PERSONA] of Appeal had found that there was no evidence which made it possible for it to conclude that FCG, whether through the intermediary of that subsidiary or directly, offered third companies technical and management services related to the oil industry, that is to say the services referred to by the applicant in its notice of opposition. 24 Lastly, the [OSCURATO:PERSONA] held, in paragraph 43 of the judgment under appeal, that FCG had not put forward in the proceedings before the [OSCURATO:PERSONA] any argument or any evidence already submitted in the course of the proceedings before OHIM that made it possible to prove the existence of the well-known mark or the use of the company name in respect of technical and management services related to the oil industry, despite the fact that it was required to submit such evidence, in view of the way in which it had defined the earlier rights on which it based its opposition. 25 In the third place, in paragraph 45 of the judgment under appeal, the [OSCURATO:PERSONA] upheld the [OSCURATO:PERSONA] of Appeal’s assessment that the goods and services covered by the mark at issue in respect of which the opposition had not been upheld did not bear any similarity to the goods and services in respect of which the existence of the earlier rights of which FCG was the proprietor had been recognised as proved. 26 Consequently, in paragraph 46 of the judgment under appeal, the [OSCURATO:PERSONA] stated that FCG was not justified in claiming that, in respect of the goods and services covered by the mark at issued which did not bear any degree of similarity to the goods and services in respect of which its earlier rights had been proved, the [OSCURATO:PERSONA] of Appeal had erred in rejecting its opposition both on the basis of [OSCURATO:PERSONA] 8(1) of [OSCURATO:PERSONA] 207/2009, as regards the well-known mark, and on the basis of [OSCURATO:PERSONA] 8(4) of that regulation, as regards the company name. 27 Having regard to all of the above considerations, the [OSCURATO:PERSONA] dismissed the action.

Form of order sought by FCG 28 FCG claims that the [OSCURATO:PERSONA] should: – set aside the judgment under appeal, – annul the contested decision in so far as it concerns the goods and services in relation to which the opposition was dismissed, and – order OHIM and [OSCURATO:PERSONA] to pay the costs.

The appeal 29 [OSCURATO:PERSONA] 181 of its [OSCURATO:PERSONA] of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the [OSCURATO:PERSONA] may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the [OSCURATO:PERSONA], decide by reasoned order to dismiss that appeal in whole or in part. 30 [OSCURATO:PERSONA] 181 should be applied to the present appeal. 31 In support of this appeal, FCG relies on four grounds of appeal.

The first alleges an error of law by the [OSCURATO:PERSONA], in that it is said to have wrongly rejected as inadmissible the evidence submitted for the first time before it.

The second and third grounds of appeal allege that the [OSCURATO:PERSONA] infringed [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 and erred in its application of the case-law relating to the global assessment of the likelihood of confusion.

The fourth ground of appeal alleges that the [OSCURATO:PERSONA] wrongly refused to take into account the evidential value of Portuguese judicial decisions.

It is appropriate to consider, consecutively, the first ground of appeal, the fourth ground of appeal, and then the second and third grounds of appeal together.

The first ground of appeal Arguments of FCG 32 FCG claims that the [OSCURATO:PERSONA] committed an error of law in rejecting as inadmissible the evidence adduced for the first time before it, in particular the decisions of the Tribunal do Comércio de Lisboa ([OSCURATO:PERSONA]) of 18 January 2012 and 17 July 2013. 33 FCG argues in this context that the evidence submitted to the [OSCURATO:PERSONA] was not exclusively intended to establish the reputation of the mark pursuant to [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009, which FCG concedes that it did not claim to have been infringed before the [OSCURATO:PERSONA] of Appeal, but was intended to support the arguments as a whole presented in the proceedings before the [OSCURATO:PERSONA].

For example, FCG indicates that, while it is true that the evidence in question demonstrates the reputation of the mark [OSCURATO:PERSONA], it also establishes that FCG’s rights in Portugal are well-known and distinctive.

Accordingly, the [OSCURATO:PERSONA] was wrong to conclude that that evidence might change the subject-matter of the proceedings within the meaning of [OSCURATO:PERSONA] 135(4) of its [OSCURATO:PERSONA] of Procedure, in that the subject of this dispute concerned the existence of a likelihood of confusion between the marks at issue as regards all the goods and services which they cover in Portugal. 34 Moreover, FCG argues, as regards the admissibility of the evidence submitted for the first time before the [OSCURATO:PERSONA], that the case-law ought to be applied by analogy which permits the production, before the Boards of Appeal of OHIM, of evidence which has not previously been submitted to OHIM’s [OSCURATO:PERSONA]. 35 With regard, more particularly, to the Portuguese judicial decisions referred to in paragraph 32 above, FCG adds that it was not possible for FCG to produce them in the proceedings before the [OSCURATO:PERSONA] of Appeal, because they were delivered only after the closure of those proceedings.

FCG contends, moreover, that their relevance to the subject-matter of the dispute has been proven, as they contain considerations which make it possible to establish the existence of a likelihood of confusion between the marks at issue.

Findings of the [OSCURATO:PERSONA] 36 As regards the evidence adduced by FCG for the first time before the [OSCURATO:PERSONA], in paragraph 38 of the judgment under appeal that [OSCURATO:PERSONA] excluded from the proceedings a number of documents which FCG itself acknowledged had not been submitted to the [OSCURATO:PERSONA] of Appeal and which had the purpose of demonstrating the use of the well-known mark and the company name as regards technical and management services related to the oil industry. 37 [OSCURATO:PERSONA] also noted, in paragraph 25 of the judgment under appeal, that FCG relied on a number of Portuguese judicial decisions in support of the argument seeking to prove the reputation of its earlier rights within the meaning of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009. 38 It is sufficient to recall that, under [OSCURATO:PERSONA] 135(4) of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA], the parties’ pleadings may not change the subject-matter of the proceedings before the [OSCURATO:PERSONA] of Appeal.

Moreover, according to the case-law of the [OSCURATO:PERSONA] of Justice, the purpose of an action before the [OSCURATO:PERSONA] is to review the lawfulness of decisions of the Boards of Appeal of OHIM within the meaning of [OSCURATO:PERSONA] 65(2) of [OSCURATO:PERSONA] 207/2009.

It follows from that provision that facts which were not relied on by the parties before OHIM cannot be relied on at the stage of the appeal before the [OSCURATO:PERSONA].

It also follows from that provision that the [OSCURATO:PERSONA] cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it.

The lawfulness of a decision of a [OSCURATO:PERSONA] of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (see judgment in

[OSCURATO:PERSONA]

v

OHIM

, C‑16/06 P, EU:C:2008:739, paragraphs 136 to 138). 39 It follows that the [OSCURATO:PERSONA] correctly applied the case-law cited in the previous paragraph in excluding the evidence which, not having previously been adduced before the [OSCURATO:PERSONA] of Appeal, was inadmissible and hence could not be relied on for the purpose of calling into question the lawfulness of the contentious decision. 40 With regard to FCG’s claim that the Portuguese judicial decisions referred to in paragraph 37 above had the purpose not only of demonstrating the reputation of the earlier mark but also of substantiating the whole argument put forward in its application, this claim is contradicted by the documents in the case at first instance.

It emerges, in particular, from the observations of FCG submitted to the [OSCURATO:PERSONA] on 10 January 2014 in reply to the questions put by the [OSCURATO:PERSONA] in writing that ‘the documents submitted … regard[ed] the reputation of the earlier mark’. 41 Consequently, the [OSCURATO:PERSONA] did not err in law in holding, pursuant to [OSCURATO:PERSONA] 135(4) of its [OSCURATO:PERSONA] of Procedure, that those Portuguese judicial decisions had been produced in support of a plea in law which could have changed the subject-matter of the proceedings. 42 In the light of the foregoing, the first ground of appeal must be rejected as being manifestly unfounded.

The fourth ground of appeal 43 In this ground of appeal, FCG criticises the [OSCURATO:PERSONA] for having refused to take into account the evidential value of the Portuguese judicial decisions produced for the first time before it. 44 However, since the first ground of appeal, which sought from the [OSCURATO:PERSONA] an acknowledgment of the admissibility of these judicial decisions as evidence, has been rejected as manifestly unfounded, the fourth ground can likewise only be rejected as manifestly unfounded.

The second and third grounds of appeal Arguments of FCG 45 In its second ground of appeal, FCG criticises the [OSCURATO:PERSONA] for not having, in accordance with its case-law, performed a global assessment of the likelihood of confusion between the marks at issue, taking account of all the relevant factors, namely the degree of knowledge of the earlier mark on the relevant market, the level of attention of the relevant public and the association which that public might perceive between the two marks. 46 According to FCG, because of its failure to take account of all the relevant factors, the [OSCURATO:PERSONA] wrongly held that there was no likelihood of confusion with regard to any of the goods and services covered by the mark whose registration was sought, and particularly with regard to those related to the oil industry.

FCG also claims that the [OSCURATO:PERSONA] wrongly upheld the [OSCURATO:PERSONA] of Appeal’s assessment that the goods and services covered by the mark at issue in relation to which the opposition had been rejected did not bear any similarity to the goods and services in respect of which the existence of FCG’s earlier rights had been proved. 47 In its third ground of appeal, FCG claims that, in considering the application, the [OSCURATO:PERSONA] also failed to recognise the interdependence between the various factors which ought to have been taken into account for the purpose of evaluating likelihood of confusion, and recalls, in this context, the criteria established in the case-law with regard to the concept of likelihood of confusion.

Findings of the [OSCURATO:PERSONA] 48 As the [OSCURATO:PERSONA] has held on numerous occasions, for the purposes of applying [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94, the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered.

These conditions are cumulative (see judgment in Gateway v

OHIM

, C‑57/08 P, EU:C:2008:718, paragraph 45 and the case-law cited). 49 Thus it is only to the extent that these conditions are met that it is necessary to establish whether the [OSCURATO:PERSONA] correctly applied the settled case-law of the [OSCURATO:PERSONA] of Justice, according to which the existence of a likelihood of confusion on the part of the public must be assessed globally, taking account of all the relevant factors of the particular case (see judgments in

OHIM

v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 34; Aceites del Sur-Coosur v Koipe , C‑498/07 P, EU:C:2009:503, paragraph 59; and

[OSCURATO:PERSONA]

v UniCredito Italiano , C‑317/10 P, EU:C:2011:405, paragraph 45), with that global assessment implying, likewise according to the case-law of the [OSCURATO:PERSONA] of Justice, some interdependence between the factors taken into account (order in Przedsiębiorstwo [OSCURATO:PERSONA] v

OHIM

, C‑91/14 P, EU:C:2014:2261, paragraph 23). 50 It emerges from paragraph 43 of the judgment under appeal that, as regards management and technical services relating to the oil industry, the evidence submitted by FCG before the [OSCURATO:PERSONA] of Appeal, and that which it submitted to the [OSCURATO:PERSONA] and which the latter ruled admissible, was not deemed sufficient to establish the existence of the well-known mark and the use of the company name in connection with those services. 51 In paragraph 45 of the judgment under appeal, the [OSCURATO:PERSONA] upheld the assessments by the [OSCURATO:PERSONA] of Appeal in the contested decision to the effect that the goods and services covered by the mark [OSCURATO:PERSONA] in relation to which the opposition was rejected did not bear any similarity to the goods and services in relation to which the existence of FCG’s earlier rights had been recognised as established. [OSCURATO:PERSONA] also observed that those assessments had, moreover, not been contested by FCG. 52 In so far as FCG now seeks in the present appeal proceedings to contest the assessments made by the [OSCURATO:PERSONA] concerning the similarity between the goods and services at issue, it must be observed that, according to [OSCURATO:PERSONA] 170(1) of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA] of Justice, the subject-matter of the proceedings before the [OSCURATO:PERSONA] may not be changed in the appeal.

The jurisdiction of the [OSCURATO:PERSONA] of Justice in an appeal is limited to review of the findings of law on the pleas argued before the court of first instance.

A party may not, therefore, put forward for the first time before the [OSCURATO:PERSONA] of Justice a plea in law which it has not raised before the [OSCURATO:PERSONA], since to do so would be to allow it to bring before the [OSCURATO:PERSONA] of Justice, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the [OSCURATO:PERSONA] (see, in particular, judgments in Commission v [OSCURATO:PERSONA] and Others , C‑136/92 P, EU:C:1994:211, paragraph 59, and

[OSCURATO:PERSONA]

v Commission , C‑280/08 P, EU:C:2010:603, paragraph 34). 53 Consequently, it is clear that the cumulative conditions necessary for the purpose of an assessment by the [OSCURATO:PERSONA] of the likelihood of confusion in relation to all the relevant factors were not met, as FCG had established neither the existence of the well-known mark, as regards management and technical services related to the oil industry, nor the similarity between the goods and services covered by the mark at issue for which the opposition had been rejected and the goods and services in respect of which the existence of FCG’s earlier rights had been recognised as established. 54 It follows that the second and third grounds of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded. 55 It follows from all the foregoing considerations that the appeal must be dismissed.

Costs 56 [OSCURATO:PERSONA] 137 of the [OSCURATO:PERSONA] of Procedure, applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. 57 As the present order has been adopted prior to notification of the appeal to the defendant, and therefore before the latter could have incurred costs, FCG will be ordered to bear its own costs.

On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders:

1. The appeal is dismissed.

2. [OSCURATO:PERSONA] is ordered to bear its own costs. [Signatures] * Language of the case: English.

Anonimizzato ex art. 52 D.Lgs. 196/2003
[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 26 February 2015 ( * ) (Appeal — [OSCURATO:PERSONA] trade mark — Word mark [OSCURATO:PERSONA] — [OSCURATO:PERSONA] by the owner of the well-known trade mark, company name and national logos including the word elements ‘[OSCURATO:PERSONA]’ — Partial rejection of the opposition — Admissibility of evidence adduced for the first time before the [OSCURATO:PERSONA] — Likelihood of confusion) [OSCURATO:PERSONA] C‑414/14 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 2 September 2014, [OSCURATO:PERSONA], established in [OSCURATO:PERSONA] (Portugal), represented by G. [OSCURATO:PERSONA], G. [OSCURATO:PERSONA] and P. [OSCURATO:PERSONA], advogados, appellant, the other parties to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM), defendant at first instance, [OSCURATO:PERSONA], residing in Oeiras (Portugal), intervener at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of A. Ó Caoimh, President of the [OSCURATO:PERSONA], C. Toader (Rapporteur) and C.G. Fernlund, Judges, [OSCURATO:PERSONA]: P. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], having regard to the decision taken, after hearing the [OSCURATO:PERSONA], to give a decision on the action by reasoned order, pursuant to [OSCURATO:PERSONA] 181 of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA] of Justice, makes the following [OSCURATO:PERSONA] 1 By its appeal, the [OSCURATO:PERSONA] (‘FCG’) asks the [OSCURATO:PERSONA] to set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] in [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) (T‑541/11, EU:T:2014:584, ‘the judgment under appeal’) dismissing its application for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM) (‘the [OSCURATO:PERSONA] of Appeal’) of 15 July 2011 ([OSCURATO:PERSONA] R 1436/2010-2), relating to opposition proceedings between FCG and [OSCURATO:PERSONA] (‘the contested decision’). Legal context 2 [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009, repealed and replaced [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the [OSCURATO:PERSONA] trade mark (OJ 1994 L 11, p. 1). In accordance with [OSCURATO:PERSONA] 166 of [OSCURATO:PERSONA] 207/2009, references to [OSCURATO:PERSONA] 40/94 are to be construed as references to [OSCURATO:PERSONA] 207/2009 and are to be read in accordance with the correlation table set out in Annex II to that regulation. 3 [OSCURATO:PERSONA] 8 of [OSCURATO:PERSONA] 207/2009 provides: ‘1.      Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: … (b)      if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. 2.      “Earlier trade marks” within the meaning of paragraph 1 means: … (c)      trade marks which, on the date of application for registration of the [OSCURATO:PERSONA] trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the [OSCURATO:PERSONA] trade mark, are well known in a [OSCURATO:PERSONA], in the sense in which the words “well known” are used in [OSCURATO:PERSONA] 6 bis of the [OSCURATO:PERSONA]. … 4.      Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the [OSCURATO:PERSONA] legislation or the law of the [OSCURATO:PERSONA] governing that sign: (a)      rights to that sign were acquired prior to the date of application for registration of the [OSCURATO:PERSONA] trade mark, or the date of the priority claimed for the application for registration of the [OSCURATO:PERSONA] trade mark; (b)      that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. 5.      Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier [OSCURATO:PERSONA] trade mark the trade mark has a reputation in the [OSCURATO:PERSONA] and, in the case of an earlier national trade mark, the trade mark has a reputation in the [OSCURATO:PERSONA] concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’ 4 [OSCURATO:PERSONA] 135(4) of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA] provides that the parties’ pleadings may not change the subject-matter of the proceedings before the [OSCURATO:PERSONA] of Appeal. Background to the dispute 5 On 17 November 2005, [OSCURATO:PERSONA] filed an application for registration of a [OSCURATO:PERSONA] trade mark with OHIM pursuant to [OSCURATO:PERSONA] 40/94. 6 The mark for which registration was sought is the word sign ‘[OSCURATO:PERSONA]’. 7 The goods and services in respect of which registration of the mark was sought are in Classes 4, 33, 35 to 37, 41, 42 and 44 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of [OSCURATO:PERSONA] of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: –        Class 4: ‘Fuels, petroleum (raw or refined), industrial oils and grease and lubricants’; –        Class 33: ‘Alcoholic beverages (except beers)’; –        Class 35: ‘Consultancy, advice on the provision of services in the field of management (business management); institutional support and support networks and macro-economics and information technologies, all related to business’; –        Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’; –        Class 37: ‘Service stations (petrol stations)’; –        Class 41: ‘Educational services’; –        Class 42: ‘Technical consultancy in the field of agriculture, livestock, forestry, game, and nature conservation and rural development; development of studies and projects, consultancy, consultancy in the field of engineering, in particular for the manufacturing, processing, petroleum and gas, and energy industries, environment, transport, public works, engineering work and surveys on project management, quality, maintenance and materials, industrial security and recuperation of installations, in particular quality management and building enterprises’; and –        Class 44: ‘Healthcare’. 8 [OSCURATO:PERSONA] trade mark application was published in [OSCURATO:PERSONA] 7/2007 of 19 February 2007. 9 On 18 May 2007, FCG filed a notice of opposition pursuant to [OSCURATO:PERSONA] 42 of [OSCURATO:PERSONA] 40/94 (now [OSCURATO:PERSONA] 41 of [OSCURATO:PERSONA] 207/2009) against registration of the mark applied for in respect of all the goods and services referred to in paragraph 7 above. 10 The opposition was based on the following earlier well-known mark and rights: –        the well-known mark [OSCURATO:PERSONA], covering the following goods and services: ‘Arts (plastic arts and music); charity (health and human development); science (research and promotion); education (support and development); technical and management services related to the oil industry’ (‘the well-known mark’); –        the company name [OSCURATO:PERSONA], used for all of the areas listed in the first indent above (‘the company name’); –        the Portuguese registrations No 5351 and No 5352 (‘the logos’), covering all of the goods and services listed in the first indent above and consisting of the following graphic sign: 11 The grounds relied on in support of the opposition were those set out in [OSCURATO:PERSONA] 8(1)(b) and (4) of [OSCURATO:PERSONA] 40/94 (now [OSCURATO:PERSONA] 8(1)(b) and (4) of [OSCURATO:PERSONA] 207/2009). 12 By decision of 28 May 2010, the [OSCURATO:PERSONA] of OHIM (‘the [OSCURATO:PERSONA]’) partially upheld the opposition in so far as it was based on [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. [OSCURATO:PERSONA] found that FCG had established that the well-known trade mark existed with regard to arts (plastic arts and music), charity (health and human development) and education (support and development) and that consequently there was a likelihood of confusion between the well-known mark and the mark applied for with regard to the educational services within Class 41 of the [OSCURATO:PERSONA] and to healthcare within Class 44 of that [OSCURATO:PERSONA]. 13 By contrast, the [OSCURATO:PERSONA] rejected the opposition by FCG in so far as it was based on [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009. In that regard, first, the [OSCURATO:PERSONA] considered that FCG had not provided evidence that the logos met all of the conditions set out in [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009, in particular the requirement that the signs to which this provision refers must give their proprietors the right to oppose the use of a more recent mark. Secondly, the [OSCURATO:PERSONA] took the view that FCG had also failed to submit evidence that the company name had been used, before the date on which the application for registration of the mark [OSCURATO:PERSONA] was lodged, in the field of science (research and promotion) or technical and management services related to the oil industry. 14 On 27 July 2010, FCG filed an appeal with OHIM, pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009, against the decision of the [OSCURATO:PERSONA] of 28 May 2010. 15 By the contested decision, the [OSCURATO:PERSONA] of Appeal partially upheld FCG’s appeal, in respect of services relating to development of studies and projects, as well as to consultancy, within Class 42 of the [OSCURATO:PERSONA]. [OSCURATO:PERSONA] of Appeal found, pursuant to [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009, that for these services there was a likelihood of confusion between the company name and the mark at issue, as FCG had submitted evidence of use of the company name in the field of biomedicine before the date on which the application for registration of that mark was filed. 16 By contrast, the [OSCURATO:PERSONA] of Appeal found, as the [OSCURATO:PERSONA] had done, that FCG had not proved the use of the earlier mark or the company name in particular as regards technical and management services related to the oil industry. Moreover, the [OSCURATO:PERSONA] of Appeal upheld the finding of the [OSCURATO:PERSONA] that FCG had not submitted evidence that the logos gave their proprietor the right to prohibit the use of a more recent mark. The procedure before the [OSCURATO:PERSONA] and the judgment under appeal 17 By application lodged at the Registry of the [OSCURATO:PERSONA] on 10 October 2011, FCG brought an action for the annulment of the contested decision in so far as the [OSCURATO:PERSONA] of Appeal had not upheld its opposition in its entirety. In support of its action, FCG relied on a single plea in law, alleging infringement of [OSCURATO:PERSONA] 8(1)(b), (4) and (5) of [OSCURATO:PERSONA] (EC) No 207/2009 and [OSCURATO:PERSONA] 16(3) of the [OSCURATO:PERSONA] on [OSCURATO:PERSONA]-[OSCURATO:PERSONA] of [OSCURATO:PERSONA] (TRIPs), which constitutes Annex 1C to the [OSCURATO:PERSONA] establishing the [OSCURATO:PERSONA] (WTO) signed at Marrakesh on 15 April 1994 and approved by [OSCURATO:PERSONA] 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the [OSCURATO:PERSONA], as regards matters within its competence, of the agreements reached in the [OSCURATO:PERSONA] multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1). 18 In the first place, in the judgment under appeal, the [OSCURATO:PERSONA] ruled on pleas of inadmissibility raised by OHIM relating to certain heads of claim in the application. 19 In this regard, referring, in paragraph 27 of the judgment under appeal, to [OSCURATO:PERSONA] 135(4) of its [OSCURATO:PERSONA] of Procedure and the relevant case-law, the [OSCURATO:PERSONA] rejected the single plea as inadmissible in so far as it alleged infringement of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009 and [OSCURATO:PERSONA] 16(3) of the agreement referred to in paragraph 17 above. In paragraph 28 of the judgment under appeal, that [OSCURATO:PERSONA] held that, as FCG had not relied on infringement of those provisions either before the [OSCURATO:PERSONA] or before the [OSCURATO:PERSONA] of Appeal, its arguments alleging infringement of those provisions and alleging that the reputation of its earlier rights should have led the [OSCURATO:PERSONA] of Appeal to uphold its opposition in its entirety, including in respect of the dissimilar goods and services, had to be rejected as inadmissible. 20 In paragraph 29 of the judgment under appeal, the [OSCURATO:PERSONA] held that the evidence adduced by FCG for the first time before it in support of the arguments referred to in paragraph 19 above should likewise be rejected as inadmissible. Paragraph 25 of the judgment under appeal indicated that that evidence comprised a number of Portuguese judicial decisions which had become final. 21 In the second place, as to the substance, the [OSCURATO:PERSONA] first recalled that FCG’s opposition to the registration of the mark at issue had already been partially upheld on the basis of [OSCURATO:PERSONA] 8(1)(b) and (4) of [OSCURATO:PERSONA] 207/2009, FCG having proved the existence of the well-known mark as regards arts (plastic arts and music), charity (health and human development) and education (support and development) and also the use of the company name in the field of biomedicine. It went on to demarcate the scope of the dispute brought before it as follows: ‘35      It is necessary to uphold the [OSCURATO:PERSONA] of Appeal’s assessments in the contested decision, which are, moreover, not disputed by [FCG], as regards the definition of the relevant public, the finding that the signs at issue are similar, the finding that there is no similarity between the goods and services covered by the mark [at issue] and those in respect of which the [OSCURATO:PERSONA] of Appeal found that the use of the well-known mark and the company name had been proved and the finding that [FCG] had not established that the logos satisfied the conditions set out in [OSCURATO:PERSONA] 8(4) of [OSCURATO:PERSONA] 207/2009. 36      By contrast, it is necessary to examine the arguments by which [FCG] seeks to show that the [OSCURATO:PERSONA] of Appeal should have upheld its opposition to a greater extent. 37      Consequently, given that it has been held … that [FCG] was not entitled to submit, for the first time before the [OSCURATO:PERSONA], either arguments alleging that the reputation of its earlier rights should have precluded registration of the mark applied for irrespective of the goods and services in respect of which the existence of those earlier rights had been proved or items of evidence that were not submitted in the course of the proceedings before OHIM, it is necessary to examine whether [FCG] is justified in claiming that, having regard to the items of evidence that were submitted in due time, the [OSCURATO:PERSONA] of Appeal erred in finding that the use of the well-known mark and the company name had not been proved as regards technical and management services related to the oil industry.’ 22 With regard to FCG’s argument that the [OSCURATO:PERSONA] of Appeal had erred in finding that the use of the well-known mark and the company name had not been proved as regards technical and management services related to the oil industry, the [OSCURATO:PERSONA] held, in paragraph 37 of the judgment under appeal, as a preliminary point, that no account should be taken of evidence which FCG had submitted for the first time before it and which FCG acknowledged not having submitted to the [OSCURATO:PERSONA] of Appeal. 23 Next, the [OSCURATO:PERSONA] found that, in its appeal, FCG had criticised generally the assessment of the evidence undertaken by the [OSCURATO:PERSONA] and the [OSCURATO:PERSONA] of Appeal. In this respect, the [OSCURATO:PERSONA] observed, in paragraph 41 of the judgment under appeal, that the [OSCURATO:PERSONA] of Appeal had concluded on the basis of a number of items of evidence that FCG was carrying out a commercial activity in the oil industry sector through its subsidiary P and that the possibility could not be excluded that consumers might establish a link between the company name and the oil sector. [OSCURATO:PERSONA] added that, by contrast, the [OSCURATO:PERSONA] of Appeal had found that there was no evidence which made it possible for it to conclude that FCG, whether through the intermediary of that subsidiary or directly, offered third companies technical and management services related to the oil industry, that is to say the services referred to by the applicant in its notice of opposition. 24 Lastly, the [OSCURATO:PERSONA] held, in paragraph 43 of the judgment under appeal, that FCG had not put forward in the proceedings before the [OSCURATO:PERSONA] any argument or any evidence already submitted in the course of the proceedings before OHIM that made it possible to prove the existence of the well-known mark or the use of the company name in respect of technical and management services related to the oil industry, despite the fact that it was required to submit such evidence, in view of the way in which it had defined the earlier rights on which it based its opposition. 25 In the third place, in paragraph 45 of the judgment under appeal, the [OSCURATO:PERSONA] upheld the [OSCURATO:PERSONA] of Appeal’s assessment that the goods and services covered by the mark at issue in respect of which the opposition had not been upheld did not bear any similarity to the goods and services in respect of which the existence of the earlier rights of which FCG was the proprietor had been recognised as proved. 26 Consequently, in paragraph 46 of the judgment under appeal, the [OSCURATO:PERSONA] stated that FCG was not justified in claiming that, in respect of the goods and services covered by the mark at issued which did not bear any degree of similarity to the goods and services in respect of which its earlier rights had been proved, the [OSCURATO:PERSONA] of Appeal had erred in rejecting its opposition both on the basis of [OSCURATO:PERSONA] 8(1) of [OSCURATO:PERSONA] 207/2009, as regards the well-known mark, and on the basis of [OSCURATO:PERSONA] 8(4) of that regulation, as regards the company name. 27 Having regard to all of the above considerations, the [OSCURATO:PERSONA] dismissed the action. Form of order sought by FCG 28 FCG claims that the [OSCURATO:PERSONA] should: –        set aside the judgment under appeal, –        annul the contested decision in so far as it concerns the goods and services in relation to which the opposition was dismissed, and –        order OHIM and [OSCURATO:PERSONA] to pay the costs. The appeal 29 [OSCURATO:PERSONA] 181 of its [OSCURATO:PERSONA] of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the [OSCURATO:PERSONA] may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the [OSCURATO:PERSONA], decide by reasoned order to dismiss that appeal in whole or in part. 30 [OSCURATO:PERSONA] 181 should be applied to the present appeal. 31 In support of this appeal, FCG relies on four grounds of appeal. The first alleges an error of law by the [OSCURATO:PERSONA], in that it is said to have wrongly rejected as inadmissible the evidence submitted for the first time before it. The second and third grounds of appeal allege that the [OSCURATO:PERSONA] infringed [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 and erred in its application of the case-law relating to the global assessment of the likelihood of confusion. The fourth ground of appeal alleges that the [OSCURATO:PERSONA] wrongly refused to take into account the evidential value of Portuguese judicial decisions. It is appropriate to consider, consecutively, the first ground of appeal, the fourth ground of appeal, and then the second and third grounds of appeal together. The first ground of appeal Arguments of FCG 32 FCG claims that the [OSCURATO:PERSONA] committed an error of law in rejecting as inadmissible the evidence adduced for the first time before it, in particular the decisions of the Tribunal do Comércio de Lisboa ([OSCURATO:PERSONA]) of 18 January 2012 and 17 July 2013. 33 FCG argues in this context that the evidence submitted to the [OSCURATO:PERSONA] was not exclusively intended to establish the reputation of the mark pursuant to [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009, which FCG concedes that it did not claim to have been infringed before the [OSCURATO:PERSONA] of Appeal, but was intended to support the arguments as a whole presented in the proceedings before the [OSCURATO:PERSONA]. For example, FCG indicates that, while it is true that the evidence in question demonstrates the reputation of the mark [OSCURATO:PERSONA], it also establishes that FCG’s rights in Portugal are well-known and distinctive. Accordingly, the [OSCURATO:PERSONA] was wrong to conclude that that evidence might change the subject-matter of the proceedings within the meaning of [OSCURATO:PERSONA] 135(4) of its [OSCURATO:PERSONA] of Procedure, in that the subject of this dispute concerned the existence of a likelihood of confusion between the marks at issue as regards all the goods and services which they cover in Portugal. 34 Moreover, FCG argues, as regards the admissibility of the evidence submitted for the first time before the [OSCURATO:PERSONA], that the case-law ought to be applied by analogy which permits the production, before the Boards of Appeal of OHIM, of evidence which has not previously been submitted to OHIM’s [OSCURATO:PERSONA]. 35 With regard, more particularly, to the Portuguese judicial decisions referred to in paragraph 32 above, FCG adds that it was not possible for FCG to produce them in the proceedings before the [OSCURATO:PERSONA] of Appeal, because they were delivered only after the closure of those proceedings. FCG contends, moreover, that their relevance to the subject-matter of the dispute has been proven, as they contain considerations which make it possible to establish the existence of a likelihood of confusion between the marks at issue. Findings of the [OSCURATO:PERSONA] 36 As regards the evidence adduced by FCG for the first time before the [OSCURATO:PERSONA], in paragraph 38 of the judgment under appeal that [OSCURATO:PERSONA] excluded from the proceedings a number of documents which FCG itself acknowledged had not been submitted to the [OSCURATO:PERSONA] of Appeal and which had the purpose of demonstrating the use of the well-known mark and the company name as regards technical and management services related to the oil industry. 37 [OSCURATO:PERSONA] also noted, in paragraph 25 of the judgment under appeal, that FCG relied on a number of Portuguese judicial decisions in support of the argument seeking to prove the reputation of its earlier rights within the meaning of [OSCURATO:PERSONA] 8(5) of [OSCURATO:PERSONA] 207/2009. 38 It is sufficient to recall that, under [OSCURATO:PERSONA] 135(4) of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA], the parties’ pleadings may not change the subject-matter of the proceedings before the [OSCURATO:PERSONA] of Appeal. Moreover, according to the case-law of the [OSCURATO:PERSONA] of Justice, the purpose of an action before the [OSCURATO:PERSONA] is to review the lawfulness of decisions of the Boards of Appeal of OHIM within the meaning of [OSCURATO:PERSONA] 65(2) of [OSCURATO:PERSONA] 207/2009. It follows from that provision that facts which were not relied on by the parties before OHIM cannot be relied on at the stage of the appeal before the [OSCURATO:PERSONA]. It also follows from that provision that the [OSCURATO:PERSONA] cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The lawfulness of a decision of a [OSCURATO:PERSONA] of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (see judgment in [OSCURATO:PERSONA] v OHIM , C‑16/06 P, EU:C:2008:739, paragraphs 136 to 138). 39 It follows that the [OSCURATO:PERSONA] correctly applied the case-law cited in the previous paragraph in excluding the evidence which, not having previously been adduced before the [OSCURATO:PERSONA] of Appeal, was inadmissible and hence could not be relied on for the purpose of calling into question the lawfulness of the contentious decision. 40 With regard to FCG’s claim that the Portuguese judicial decisions referred to in paragraph 37 above had the purpose not only of demonstrating the reputation of the earlier mark but also of substantiating the whole argument put forward in its application, this claim is contradicted by the documents in the case at first instance. It emerges, in particular, from the observations of FCG submitted to the [OSCURATO:PERSONA] on 10 January 2014 in reply to the questions put by the [OSCURATO:PERSONA] in writing that ‘the documents submitted … regard[ed] the reputation of the earlier mark’. 41 Consequently, the [OSCURATO:PERSONA] did not err in law in holding, pursuant to [OSCURATO:PERSONA] 135(4) of its [OSCURATO:PERSONA] of Procedure, that those Portuguese judicial decisions had been produced in support of a plea in law which could have changed the subject-matter of the proceedings. 42 In the light of the foregoing, the first ground of appeal must be rejected as being manifestly unfounded. The fourth ground of appeal 43 In this ground of appeal, FCG criticises the [OSCURATO:PERSONA] for having refused to take into account the evidential value of the Portuguese judicial decisions produced for the first time before it. 44 However, since the first ground of appeal, which sought from the [OSCURATO:PERSONA] an acknowledgment of the admissibility of these judicial decisions as evidence, has been rejected as manifestly unfounded, the fourth ground can likewise only be rejected as manifestly unfounded. The second and third grounds of appeal Arguments of FCG 45 In its second ground of appeal, FCG criticises the [OSCURATO:PERSONA] for not having, in accordance with its case-law, performed a global assessment of the likelihood of confusion between the marks at issue, taking account of all the relevant factors, namely the degree of knowledge of the earlier mark on the relevant market, the level of attention of the relevant public and the association which that public might perceive between the two marks. 46 According to FCG, because of its failure to take account of all the relevant factors, the [OSCURATO:PERSONA] wrongly held that there was no likelihood of confusion with regard to any of the goods and services covered by the mark whose registration was sought, and particularly with regard to those related to the oil industry. FCG also claims that the [OSCURATO:PERSONA] wrongly upheld the [OSCURATO:PERSONA] of Appeal’s assessment that the goods and services covered by the mark at issue in relation to which the opposition had been rejected did not bear any similarity to the goods and services in respect of which the existence of FCG’s earlier rights had been proved. 47 In its third ground of appeal, FCG claims that, in considering the application, the [OSCURATO:PERSONA] also failed to recognise the interdependence between the various factors which ought to have been taken into account for the purpose of evaluating likelihood of confusion, and recalls, in this context, the criteria established in the case-law with regard to the concept of likelihood of confusion. Findings of the [OSCURATO:PERSONA] 48 As the [OSCURATO:PERSONA] has held on numerous occasions, for the purposes of applying [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 40/94, the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered. These conditions are cumulative (see judgment in Gateway v OHIM , C‑57/08 P, EU:C:2008:718, paragraph 45 and the case-law cited). 49 Thus it is only to the extent that these conditions are met that it is necessary to establish whether the [OSCURATO:PERSONA] correctly applied the settled case-law of the [OSCURATO:PERSONA] of Justice, according to which the existence of a likelihood of confusion on the part of the public must be assessed globally, taking account of all the relevant factors of the particular case (see judgments in OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 34; Aceites del Sur-Coosur v Koipe , C‑498/07 P, EU:C:2009:503, paragraph 59; and [OSCURATO:PERSONA] v UniCredito Italiano , C‑317/10 P, EU:C:2011:405, paragraph 45), with that global assessment implying, likewise according to the case-law of the [OSCURATO:PERSONA] of Justice, some interdependence between the factors taken into account (order in Przedsiębiorstwo [OSCURATO:PERSONA] v OHIM , C‑91/14 P, EU:C:2014:2261, paragraph 23). 50 It emerges from paragraph 43 of the judgment under appeal that, as regards management and technical services relating to the oil industry, the evidence submitted by FCG before the [OSCURATO:PERSONA] of Appeal, and that which it submitted to the [OSCURATO:PERSONA] and which the latter ruled admissible, was not deemed sufficient to establish the existence of the well-known mark and the use of the company name in connection with those services. 51 In paragraph 45 of the judgment under appeal, the [OSCURATO:PERSONA] upheld the assessments by the [OSCURATO:PERSONA] of Appeal in the contested decision to the effect that the goods and services covered by the mark [OSCURATO:PERSONA] in relation to which the opposition was rejected did not bear any similarity to the goods and services in relation to which the existence of FCG’s earlier rights had been recognised as established. [OSCURATO:PERSONA] also observed that those assessments had, moreover, not been contested by FCG. 52 In so far as FCG now seeks in the present appeal proceedings to contest the assessments made by the [OSCURATO:PERSONA] concerning the similarity between the goods and services at issue, it must be observed that, according to [OSCURATO:PERSONA] 170(1) of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA] of Justice, the subject-matter of the proceedings before the [OSCURATO:PERSONA] may not be changed in the appeal. The jurisdiction of the [OSCURATO:PERSONA] of Justice in an appeal is limited to review of the findings of law on the pleas argued before the court of first instance. A party may not, therefore, put forward for the first time before the [OSCURATO:PERSONA] of Justice a plea in law which it has not raised before the [OSCURATO:PERSONA], since to do so would be to allow it to bring before the [OSCURATO:PERSONA] of Justice, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the [OSCURATO:PERSONA] (see, in particular, judgments in Commission v [OSCURATO:PERSONA] and Others , C‑136/92 P, EU:C:1994:211, paragraph 59, and [OSCURATO:PERSONA] v Commission , C‑280/08 P, EU:C:2010:603, paragraph 34). 53 Consequently, it is clear that the cumulative conditions necessary for the purpose of an assessment by the [OSCURATO:PERSONA] of the likelihood of confusion in relation to all the relevant factors were not met, as FCG had established neither the existence of the well-known mark, as regards management and technical services related to the oil industry, nor the similarity between the goods and services covered by the mark at issue for which the opposition had been rejected and the goods and services in respect of which the existence of FCG’s earlier rights had been recognised as established. 54 It follows that the second and third grounds of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded. 55 It follows from all the foregoing considerations that the appeal must be dismissed. Costs 56 [OSCURATO:PERSONA] 137 of the [OSCURATO:PERSONA] of Procedure, applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. 57 As the present order has been adopted prior to notification of the appeal to the defendant, and therefore before the latter could have incurred costs, FCG will be ordered to bear its own costs. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed. 2. [OSCURATO:PERSONA] is ordered to bear its own costs. [Signatures] * Language of the case: English.
Sentenza Corte di giustizia UE n. 1436/2015 — Fons Iuris — Fons Iuris