Judgments nº T-536/18 of Tribunal General de la Unión Europea, October 10, 2019

• Resolution Date: October 10, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-536/18

(EU trade mark - Invalidity proceedings - EU word mark FITNESS - Absolute grounds for refusal - Decision taken following the annulment of an earlier decision by the General Court - Article 65(6) of Regulation (EC) No 207/2009 (now Article 72(6) of Regulation (EU) 2017/1001) - Production of evidence for the first time before the Board of Appeal)

In Case T-536/18,

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz, A. Lambrecht and C. Elkemann, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek and H. O’Neill, acting as Agents,

defendant,

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

European Food SA, established in Drăgănești (Romania), represented by I. Speciac, R. Dincă, I.-F. Cofaru, V.-F. Diaconită and V. Stănese, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 June 2018 (Case R 755/2018-2), relating to invalidity proceedings between European Food and Société des produits Nestlé,

THE GENERAL COURT (Eighth Chamber),

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

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 11 September 2018,

having regard to the response of EUIPO lodged at the Court Registry on 6 December 2018,

having regard to the response of the intervener lodged at the Court Registry on 10 December 2018,

further to the hearing on 16 May 2019,

gives the following

Judgment

Background to the dispute

1 On 20 November 2001, the applicant, Société des produits Nestlé SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the word sign FITNESS.

3 The goods in respect of which registration was sought are in Classes 29, 30 and 32 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, for each of those classes, to the following description:

- Class 29: ‘Milk, cream, butter, cheese, yoghurts and other milk-based food preparations, substitutes for dairy products, eggs, jellies, fruit, vegetables, protein preparations for human consumption’;

- Class 30: ‘Cereals and cereal preparations; ready-to-eat cereals; breakfast cereals; foodstuffs based on rice or flour’;

- Class 32: ‘Still water, aerated or carbonated water, spring water, mineral water, flavoured water, fruit drinks, fruit juices, nectars, lemonades, sodas and other non-alcoholic drinks, syrups and other preparations for making syrups and other preparations for making beverages’.

4 On 30 May 2005, the mark applied for was registered as an EU trade mark under the number 2470326 in respect of the goods referred to in paragraph 3 above (‘the contested mark’).

5 On 2 September 2011, the intervener, European Food SA, filed an application for a declaration that the contested mark was invalid under Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (c) of that regulation (now Article 7(1)(b) and (c) of Regulation 2017/1001).

6 On 18 October 2013, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.

7 On 16 December 2013, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division. During the appeal proceedings, the intervener submitted further evidence in support of its claim that the term ‘fitness’ had a descriptive content.

8 By decision of 19 June 2015 in Case R 2542/2013-4 (‘the earlier decision’), the Fourth Board of Appeal of EUIPO dismissed that appeal. In particular, it rejected as belated, without taking it into consideration, the evidence submitted for the first time before it.

9 By application lodged at the Court Registry on 19 August 2015, the intervener brought an action against the earlier decision.

10 By judgment of 28 September 2016, European Food v EUIPO - Société des produits Nestlé (FITNESS) (T-476/15, EU:T:2016:568) (‘the annulment judgment’), the Court annulled the earlier decision. It held, in particular, that Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001), read in conjunction with Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), and, more specifically, with Rule 37(b)(iv) of Regulation No 2868/95 (now Article 12(4) of Regulation 2018/625), did not imply that evidence submitted for the first time before the Fourth Board of Appeal had to be regarded as belated by that Board of Appeal in invalidity proceedings based on an absolute ground for refusal (annulment judgment, paragraph 58). Consequently, the Court held that the Fourth Board of Appeal had erred in law in that it had decided not to take the evidence produced by the intervener for the first time before it into consideration because of its late submission (annulment judgment, paragraph 66).

11 EUIPO brought an appeal against the annulment judgment. By its judgment of 24 January 2018, EUIPO v European Food (C-634/16 P, EU:C:2018:30) (‘the judgment on appeal’), the Court of Justice dismissed the appeal. It held that the General Court was correct in holding, in paragraph 58 of the annulment judgment, that the evidence submitted for the first time before the Fourth Board of Appeal did not have to be considered to be out of time by the Board of Appeal in all circumstances (judgment on appeal, paragraph 45).

12 The Court of Justice pointed out that, contrary to what EUIPO claimed, the annulment judgment did not deprive the Board of Appeal of the power conferred on it by Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001) to assess...