Corte di giustizia UE n. 1235/2014

62013CO0490_EN [OSCURATO:PERSONA] part [OSCURATO:PERSONA] C‑490/13 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 12 September 2013, [OSCURATO:PERSONA]., established in [OSCURATO:PERSONA] (Barbados), represented by S. Malynicz, Barrister, instructed by A. Smith, Solicitor, appellant, the other party to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as an Agent, defendant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of C.G. Fernlund (Rapporteur), President of the [OSCURATO:PERSONA], C. Toader and E. Jarašiūnas, [OSCURATO:PERSONA], [OSCURATO:PERSONA]: P. Mengozzi, Registrar: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order, pursuant to [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA], makes the following [OSCURATO:PERSONA] 1. By its appeal, [OSCURATO:PERSONA]. (‘[OSCURATO:PERSONA]’) asks the [OSCURATO:PERSONA] to set aside the judgment of the [OSCURATO:PERSONA] in [OSCURATO:PERSONA] v OHIM  — [OSCURATO:PERSONA] (ALPHAREN) , T‑106/12, EU:T:2013:340 (‘the judgment under appeal’) whereby the [OSCURATO:PERSONA] annulled the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM) of 2 December 2011 ([OSCURATO:PERSONA] R 1235/2011-1, ‘the contested decision’), relating to opposition proceedings between [OSCURATO:PERSONA] (‘[OSCURATO:PERSONA]’) and [OSCURATO:PERSONA]. Legal context 2. [OSCURATO:PERSONA] 1d(2) of [OSCURATO:PERSONA] (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OJ 1996 L 28, p. 11), as amended by [OSCURATO:PERSONA] (EC) No 2082/2004 of 6 December 2004 (OJ 2004 L 360, p. 8; ‘[OSCURATO:PERSONA] 216/96’), provides: ‘If the case is referred to another [OSCURATO:PERSONA], that [OSCURATO:PERSONA] shall not comprise members who were party to the contested decision. This provision shall not apply if the case is referred to the [OSCURATO:PERSONA].’ Background to the dispute 3. [OSCURATO:PERSONA] — the appellant’s predecessor in law — filed an application for registration, as a Community trade mark, of the word sign ‘ALPHAREN’ for goods in the pharmaceutical and veterinary fields. [OSCURATO:PERSONA], the proprietor of the earlier word mark ALPHA D3, opposed that application on the ground that there was a likelihood of confusion. 4. By decision of 9 October 2007, the [OSCURATO:PERSONA] of OHIM upheld that opposition. [OSCURATO:PERSONA] predecessor in law brought an appeal before OHIM against that decision of the [OSCURATO:PERSONA]. 5. By decision of 24 March 2009 (‘the 2009 decision’), the [OSCURATO:PERSONA] of Appeal of OHIM dismissed that appeal, concluding that there was a likelihood of confusion. 6. [OSCURATO:PERSONA] predecessor in law brought an action before the [OSCURATO:PERSONA] against the 2009 decision. 7. By its judgment in [OSCURATO:PERSONA] v OHIM — [OSCURATO:PERSONA] (ALPHAREN) , T‑222/09, EU:T:2011:36 (‘the first judgment’), the [OSCURATO:PERSONA] upheld the action in part and annulled the 2009 decision in part on the ground that, during its examination of the case, the [OSCURATO:PERSONA] of Appeal had taken into account — in respect of two of the categories of goods referred to in the application for registration (‘Category A goods and Category C goods’) — information which it had searched for on the internet, of its own motion, rather than merely assessing the evidence produced by the parties themselves. 8. [OSCURATO:PERSONA] of the Boards of Appeal of OHIM remitted the case to the [OSCURATO:PERSONA] of Appeal so that it could give a new decision, in accordance with [OSCURATO:PERSONA] 65(6) of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). 9. By the contested decision, the [OSCURATO:PERSONA] of Appeal of OHIM rejected the application for a Community trade mark in respect of the Category A goods and the Category C goods and dismissed the appeal against the decision of the [OSCURATO:PERSONA], holding that there was a likelihood of confusion between the marks at issue. In finding that the goods covered by the marks at issue were closely linked and complementary, it relied on evidence presented by the parties in the proceedings that gave rise to the 2009 decision and on evidence adduced by [OSCURATO:PERSONA] in response to the communication of the [OSCURATO:PERSONA] of Appeal following the partial annulment of the 2009 decision. The procedure before the [OSCURATO:PERSONA] and the judgment under appeal 10. By an application lodged at the Registry of the [OSCURATO:PERSONA] on 29 February 2012, [OSCURATO:PERSONA] — which has held the rights attached to the application for registration of the Community trade mark since 23 September 2011 — brought an action for annulment of the contested decision. 11. In support of its action for annulment, the appellant relied on four pleas in law. 12. The first plea in law alleged infringement of [OSCURATO:PERSONA] 1d(2) of [OSCURATO:PERSONA] 216/96, as a result of the composition of the [OSCURATO:PERSONA] of Appeal that gave a new decision after the annulment of the 2009 decision. 13. By its second plea in law [OSCURATO:PERSONA] alleged infringement of [OSCURATO:PERSONA] 65(6) of [OSCURATO:PERSONA] 207/209 and of [OSCURATO:PERSONA] 1d(1) of [OSCURATO:PERSONA] 216/96, in that nothing in the operative part of the first judgment required that the [OSCURATO:PERSONA] of Appeal undertake a new examination and that it would have sufficed for it to reject the opposition as regards the goods in respect of which the 2009 decision had been annulled. 14. The third plea in law alleged infringement of [OSCURATO:PERSONA] 76(1) of [OSCURATO:PERSONA] 207/2009, on the basis of the evidence taken into consideration by the [OSCURATO:PERSONA] of Appeal in examining the case. 15. By its fourth plea in law [OSCURATO:PERSONA] alleged that the [OSCURATO:PERSONA] of Appeal had breached the principle of legal certainty and [OSCURATO:PERSONA] 17 of the Charter of [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] (‘the Charter’) concerning the right to property. 16. [OSCURATO:PERSONA] upheld the first plea in law in paragraph 32 of the judgment under appeal and annulled the contested decision on the ground that one of the members of the [OSCURATO:PERSONA] of Appeal that had adopted the 2009 decision had also sat on the [OSCURATO:PERSONA] of Appeal that had adopted the contested decision. 17. [OSCURATO:PERSONA] noted, in paragraph 24 of the judgment under appeal, that, according to [OSCURATO:PERSONA] 1d(2) of [OSCURATO:PERSONA] 216/96, if a case is referred to another [OSCURATO:PERSONA], that [OSCURATO:PERSONA] must not comprise members who were party to the contested decision (that provision not applying, however, if the case is referred to the [OSCURATO:PERSONA]). It concluded in paragraph 25 that, in the present case, the [OSCURATO:PERSONA] of Appeal should not have comprised a member of the [OSCURATO:PERSONA] of Appeal that had adopted the 2009 decision. [OSCURATO:PERSONA] found however, in paragraph 26, that the rule in question had not been respected. It therefore concluded, in paragraph 27, that OHIM had infringed [OSCURATO:PERSONA] 1d(2) of [OSCURATO:PERSONA] 216/96 inasmuch as the same person had been a member of both the Boards of Appeal that had adopted the 2009 decision and the contested decision. It pointed out, moreover, that the person in question had been the rapporteur for both decisions. 18. In paragraph 32 of the judgment under appeal, the [OSCURATO:PERSONA] added that if OHIM were confronted merely with a finding that the contested decision was vitiated by that unlawful aspect, it would simply give a decision in the present case by means of a [OSCURATO:PERSONA] of Appeal of another composition, and that it was therefore appropriate to examine the other pleas put forward by [OSCURATO:PERSONA]. 19. [OSCURATO:PERSONA] first examined and rejected, in paragraphs 42 to 46 of the judgment under appeal, the second and fourth pleas in law put forward in support of the action. It stated that, by the first judgment, it had annulled the 2009 decision, as regards the Category A goods and the Category C goods, on procedural grounds alone, but had in no way ruled on the question whether or not there was a likelihood of confusion between the marks at issue. It concluded that OHIM had therefore been required to re-open the proceedings and to rule again on the opposition as regards the Category A goods and the Category C goods, in order to reach a new decision while having due regard for the operative part and the grounds of the first judgment. [OSCURATO:PERSONA] also held that the first judgment, by partially annulling the 2009 decision, had in no way given an assurance that the mark applied for could be registered in respect of the Category A goods and the Category C goods. It also rejected [OSCURATO:PERSONA] arguments relating to alleged infringement of the right to intellectual property laid down in [OSCURATO:PERSONA] 17 of the Charter. 20. As regards the third plea in law, alleging infringement of [OSCURATO:PERSONA] 76(1) of [OSCURATO:PERSONA] 207/2009, the [OSCURATO:PERSONA] — after finding, in paragraph 56 of the judgment under appeal, that, for the purposes of assessing the similarity of the goods at issue, the [OSCURATO:PERSONA] of Appeal had not relied on the information that had made the 2009 decision unlawful — concluded that the [OSCURATO:PERSONA] of Appeal’s considerations in the contested decision concerning that information had to be regarded as having been included for the sake of completeness. Forms of order sought by the parties before the [OSCURATO:PERSONA] and grounds of appeal 21. By its appeal, [OSCURATO:PERSONA] submits that the [OSCURATO:PERSONA] should set aside the judgment under appeal and order OHIM to pay the costs. 22. OHIM contends that the [OSCURATO:PERSONA] should dismiss the appeal and order [OSCURATO:PERSONA] to pay the costs. 23. In support of its appeal, [OSCURATO:PERSONA] relies on two grounds of appeal. 24. The first alleges infringement of [OSCURATO:PERSONA] 65(6) of [OSCURATO:PERSONA] 207/2009 and [OSCURATO:PERSONA] 1d(1) of [OSCURATO:PERSONA] 216/96 regarding the measures to be taken in order to comply with the first judgment. [OSCURATO:PERSONA] argues that the [OSCURATO:PERSONA] should have held that OHIM may carry out a new examination of a case only in exceptional circumstances and that such an examination was not justified in the present case. 25. The second ground of appeal alleges infringement of the principle of legal certainty and of [OSCURATO:PERSONA] 17 of the Charter. The appeal 26. [OSCURATO:PERSONA] 181 of the Rules of Procedure, where the 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. 27. That provision must be applied to the present appeal. 28. [OSCURATO:PERSONA] submits that, although the judgment under appeal annulled the contested decision, as it had requested in its application before the [OSCURATO:PERSONA], its appeal is nevertheless admissible because it was successful only in part and it has a genuine interest in bringing such an appeal. 29. However, it must be noted that under [OSCURATO:PERSONA] 169(1) of the Rules of Procedure, an appeal is to seek to have set aside, in whole or in part, the decision of the [OSCURATO:PERSONA] as set out in the operative part of that decision. 30. As can be seen from point 1 of the operative part of the judgment under appeal, the [OSCURATO:PERSONA] annulled the contested decision. That annulment, which is unrestricted, therefore concerns the decision in its entirety. 31. That conclusion is supported by the reasoning of the judgment under appeal set out in paragraphs 24 to 27 and 32 thereof. It can be seen from those paragraphs that the contested decision was annulled by the [OSCURATO:PERSONA] — upholding the first plea in law put forward by [OSCURATO:PERSONA] in support of its action — simply on the basis of OHIM’s infringement of [OSCURATO:PERSONA] 1d(2) of [OSCURATO:PERSONA] 216/96, relating to the composition of the [OSCURATO:PERSONA] of Appeal to which a case is referred after the annulment by the EU judicature of a decision of another [OSCURATO:PERSONA] of Appeal of OHIM. 32. In accordance with [OSCURATO:PERSONA] 169(1) of the Rules of Procedure, an appeal could therefore only seek to challenge the annulment of the contested decision and, accordingly, the very result sought by [OSCURATO:PERSONA] in bringing an action before the [OSCURATO:PERSONA]. 33. It is clear from the analysis of the two grounds relied on by [OSCURATO:PERSONA] in support of its appeal that it actually seeks to challenge, not the operative part of the judgment under appeal, but certain reasons stated in that judgment, namely (i) those concerning the application of [OSCURATO:PERSONA] 65(6) of [OSCURATO:PERSONA] 207/2009 and [OSCURATO:PERSONA] 1d(1) of [OSCURATO:PERSONA] 216/96 and (ii) those concerning the principle of legal certainty and [OSCURATO:PERSONA] 17 of the Charter. 34. Since the grounds of appeal relied on by [OSCURATO:PERSONA] do not seek to challenge the operative part of the judgment under appeal, they must be rejected as manifestly inadmissible. 35. Accordingly, pursuant to [OSCURATO:PERSONA] 181 of the Rules of Procedure, the appeal must be dismissed. Costs 36. [OSCURATO:PERSONA] 138(1) of the Rules of Procedure, which applies to appeal proceedings pursuant to [OSCURATO:PERSONA] 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs to be awarded against [OSCURATO:PERSONA] and the latter has been unsuccessful, it must be ordered to pay the costs. [OSCURATO:PERSONA] part On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed. 2. [OSCURATO:PERSONA]. is ordered to pay the costs.