Judgments nº T-140/08 of Court of First Instance of the European Communities, October 14, 2009

• Resolution Date: October 14, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-140/08

In Case T-140/08,

Ferrero SpA, established in Alba (Italy), represented by C. Gielen and F. Jacobacci, lawyers,

applicant,

v

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

defendant,

the other party to proceedings before the Board of Appeal of OHIM being

Tirol Milch reg.Gen.mbH Innsbruck, established in Innsbruck (Austria),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 30 January 2008 (Case R 682/2007-2) relating to invalidity proceedings between Ferrero SpA and Tirol Milch reg.Gen.mbH Innsbruck,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),

composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and S. Soldevila Fragoso, Judges,

Registrar: B. Pastor, Deputy Registrar,

having regard to the application lodged at the Registry of the Court of First Instance on 14 April 2008,

having regard to the response lodged at the Registry of the Court on 22 July 2008,

further to the hearing on 11 March 2009,

gives the following

Judgment

Background to the dispute

1 On 8 April 1998 Tirol Milch reg.Gen.mbH Innsbruck filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under 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 Community trade mark (OJ 2009 L 78, p. 1)).

2 The mark for which the application for registration was made is the following figurative sign:

3 The goods for which registration was sought fall within Class 29 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and consist of the following:

-Yoghurt, fruit yoghurt, yoghurt drinks, yoghurt drinks containing fruit; semi-prepared and ready-to-serve meals based mainly on yoghurt or yoghurt products; yoghurt creams.-

4 On 14 January 1999 the applicant, Ferrero SpA, filed a notice of opposition to registration of the trade mark applied for in respect of all of the goods covered by the mark on the basis of its earlier word mark KINDER, registered in Italy since 28 January 1965 under number 168843, and after renewal under number 684985, for goods in Class 30, namely -coffee, tea, sugar, rice, tapioca, sago, coffee substitutes; bread, biscuits, cakes, pastry and confectionery, edible ice-creams; honey, treacle, yeast and baking powders; salt, mustard; pepper, vinegar, sauces, spices; edible ice; cocoa, cocoa products, namely cocoa paste for cocoa drinks, chocolate paste, coverings, namely chocolate coverings, chocolate, pralines, decorations for Christmas trees made of chocolate, goods made of an edible chocolate case with an alcoholic filling, sugar articles, confectionery, including fine and hard pastry-.

5 By decision of 29 September 2000 the Opposition Division rejected the opposition on the basis of Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).

6 On 3 November 2003 that decision was subsequently upheld by the Fourth Board of Appeal in Case R 1147/2000-4.

7 Following rejection of the opposition, the trade mark was published in Community Trade Marks Bulletin No 42/2004 of 11 October 2004.

8 On 19 August 2005 the applicant filed an application under Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009) for a declaration that registration of that Community trade mark was invalid. That application related to all of the goods covered by the Community trade mark.

9 In support of its application for a declaration of invalidity, the applicant relied, under Article 8(1)(b) and Article 8(5) of Regulation No 40/94, to which Article 52(1)(a) of that regulation refers, on the Italian registration referred to in paragraph 4 above and on 35 other earlier marks: Italian, French, Spanish and international, listed in paragraph 5 of the application initiating these proceedings, all containing the word -kinder- together with an additional word and/or figurative elements.

10 By decision of 14 March 2007 the Cancellation Division declared the Community trade mark TiMi KINDERJOGHURT invalid pursuant to Article 8(5) of Regulation No 40/94.

11 On 4 May 2007 Tirol Milch reg.Gen.mbH Innsbruck filed with OHIM, under Article 59 of Regulation No 40/94 (now Article 60 of Regulation No 207/2009), an appeal against the Cancellation Division-s decision.

12 On 30 January 2008 that appeal was upheld by a decision of the Second Board of Appeal (-the contested decision-). The Board of Appeal annulled the decision of the Cancellation Division and dismissed the application for a declaration of invalidity.

13 The Board of Appeal held, in essence, that, first, although decisions in opposition proceedings do not in law have the force of res judicata, the Cancellation Division remained bound by the substantive findings and conclusions of the earlier decisions of OHIM by virtue of the principle nemo potest venire contra factum proprium, which means that the administration is bound by its own acts, particularly when those acts have enabled parties to the proceedings legitimately to acquire rights to a registered trade mark. Next, the Board of Appeal upheld the findings of the Opposition Division-s decision and the decision of the Fourth Board of Appeal of 3 November 2003, to the effect that the marks were, overall, dissimilar, taking account of the fact that, visually and phonetically, the marks are substantially dissimilar. Lastly, the Board dismissed the request for a declaration of invalidity on the ground that a condition for the application of Article 8(1)(b) and of Article 8(5) of Regulation No 40/94, namely that the signs be identical or similar, was not satisfied.

Forms of order sought by the parties

14 The applicant claims that the Court should:

- annul the contested decision;

- order OHIM to pay the costs.

15 OHIM contends that the Court should:

- primarily, dismiss the action in its entirety;

- order the applicant to pay the costs;

- alternatively, if the Court considers that the signs are not dissimilar, either decide on Article 8(5) of Regulation No 40/94 if the Court considers that it has sufficient information, or refer the case back to OHIM for further action;

- in the latter case, order OHIM to bear only its own costs.

Substance

16 In support of its action, the applicant relies on two pleas in law alleging, first, an incorrect application of the principle of res judicata, and secondly, infringement of Article 8(1)(b) and Article 8(5) of Regulation No 40/94.

The first plea in law, alleging an incorrect application of the principle of res judicata

Arguments of the parties

17 In this plea in law, the applicant claims that the Board of Appeal contradicted itself by asserting, on the one hand, that decisions in opposition proceedings lack the negative effect of res judicata since they do not bar the admissibility of a subsequent invalidity action, while asserting, on the other hand, that such decisions cannot be entirely ignored when deciding a subsequent invalidity action having the same parties, the same subject-matter and the same grounds. Decisions in opposition proceedings have no binding effect on a subsequent action for a declaration of invalidity. The applicant puts forward, in that regard, the following four reasons.

18 First, the applicant claims that the new facts and additional evidence produced before the Cancellation Division, in particular those...