BMB sp. z o.o. v European Union Intellectual Property Office.

• Jurisdiction: European Union
• ECLI: ECLI:EU:C:2019:176
• Court: Court of Justice (European Union)
• Docket Number: C-693/17
• Date: 06 March 2019
• Celex Number: 62017CJ0693
• Procedure Type: Recurso de casación - infundado

JUDGMENT OF THE COURT (Tenth Chamber)

6 March 2019 (*)

(Appeal — Community design — Regulation (EC) No 6/2002 — Article 25(1)(e) — Invalidity proceedings — Design representing comfit boxes for sweets — Declaration of invalidity)

In Case C‑693/17 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 10 December 2017,

BMB sp. z o.o., established in Grójec (Poland), represented by K. Czubkowski, radca prawny,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by S. Hanne and D. Walicka, acting as Agents,

defendant at first instance,

Ferrero SpA, established in Alba (Italy), represented by M. Kefferpütz, Rechtsanwalt,

intervener at first instance,

THE COURT (Tenth Chamber),

composed of C. Lycourgos (Rapporteur), President of the Chamber, E. Juhász and I. Jarukaitis, Judges,

Advocate General: E. Tanchev,

Registrar: A. Calot Escobar,

having regard to the written procedure,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

Judgment

1 By its appeal, BMB sp. z o.o. asks the Court to set aside the judgment of the General Court of the European Union of 3 October 2017, BMB v EUIPO — Ferrero (Container for sweets) (T‑695/15, not published, ‘the judgment under appeal’, EU:T:2017:684), whereby the General Court dismissed its action seeking annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 September 2015 (Case R 1150/2012-3), concerning invalidity proceedings between Ferrero SpA and BMB (‘the decision at issue’).

Legal context

European Union law

2 Article 25 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), entitled ‘Grounds for invalidity’, provides, in paragraph 1(e):

‘A Community design may be declared invalid only in the following cases:

...

(e) if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use’.

French law

3 Article L713-3 of the Intellectual Property Code provides:

‘Save where the owner has consented, the following shall be prohibited if there is a risk that they might lead to confusion in the mind of the public:

(a) the reproduction, use or affixing of a mark, or the use of a mark which has been reproduced, in respect of goods or services similar to those for which the mark is registered;

(b) the imitation of a mark or the use of an imitated mark, in respect of goods or services identical with, or similar to, those for which the mark is registered.’

Background to the dispute

4 On 15 November 2007, BMB filed a design with EUIPO, which was registered the same day as a Community design under No 826 680-0001, pursuant to Regulation No 6/2002.

5 The registered design is for comfit boxes and containers in Class 09.03 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended. It is represented as follows:

View 1	View 2	View 3

6 On 11 July 2011, the intervener at first instance, Ferrero, filed an application for a declaration of invalidity of the registered design before EUIPO pursuant to Article 25(1)(c) to (g) of Regulation No 6/2002.

7 In support of its application, the intervener invoked three earlier rights, including International Registration No 405 177 of a trade mark, registered on 12 March 1974, with effect in, in particular, France. The registration is protected for goods in Class 30 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, including for ‘sweets’, and is reproduced below:

8 By decision of 25 April 2012, the Cancellation Division of EUIPO granted the application for a declaration of invalidity under Article 25(1)(e) of Regulation No 6/2002 on the basis of the international registration referred to above. It considered, in essence, that, on account of the similarity of the signs and the identity of the goods, there was a likelihood of confusion on the part of the relevant public.

9 On 21 June 2012, the appellant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the Cancellation Division’s decision.

10 By the decision at issue, the Third Board of Appeal of EUIPO dismissed the appeal and upheld the invalidity of the contested design pursuant to Article 25(1)(e) of Regulation No 6/2002.

11 The Board of Appeal held that the distinctive character per se of the earlier international registration was ‘below average’, since it ‘shows a standard container which can be filled with different products, such as sweets’. However, it held, in essence, that, on account of the high visual similarity of the signs at issue, which are not offset by phonetic and conceptual differences, and of the fact that the goods in question have at least a high degree of similarity, there was a likelihood of confusion on the part of the relevant public.

The procedure before the General Court and the judgment under appeal

12 By application lodged at the Registry of the General Court on 24 November 2015, BMB brought an action for annulment of the decision at issue.

13 It raised three pleas in law in support of its action. By its first plea, it claimed that the decision at issue was founded on an incorrect legal basis on the ground that the Board of Appeal had erred in founding the decision on Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), not on Article L713-3 of the Intellectual Property Code. The second plea alleged infringement of Article 25(1)(e) of Regulation No 6/2002 inasmuch as the Board of Appeal had erred in finding that there was a likelihood of confusion. Lastly, by its third plea, the appellant claimed that the Board of Appeal, by failing to have regard to evidence that it should have taken into consideration for the purpose of ruling on the appeal, had infringed Article 63(1) of that regulation.

14 By the judgment under appeal, the General Court dismissed those pleas. It rejected the first plea on the ground that it had no factual basis. It considered that the Board of Appeal had adopted the decision at issue pursuant to Article L713-3 of the Intellectual Property Code, not Article 8(1)(b) of Regulation No 207/2009, it being necessary to regard the reference made to the latter provision as the legal basis for the decision at issue as a mere formal error. It also rejected the second and third pleas after having found that the Board of Appeal had correctly assessed the evidence before it and had been able to find, without making an error of law or assessment, that there was a likelihood of confusion.

Forms of order sought by the parties

15 By its appeal, BMB claims that the Court should:

– set aside the judgment under appeal;

– annul the decision at issue or, in the alternative, if the state of the proceedings does not enable the Court of Justice to give final judgment, refer the case back to the General Court; and

– order Ferrero and EUIPO to pay the costs incurred before the Court of Justice and the General Court and order Ferrero to pay the costs incurred in proceedings before EUIPO.

16 EUIPO contends that the Court should:

– dismiss the appeal; and

– order the appellant to pay the costs incurred by EUIPO.

17 Ferrero contends that the Court should:

– principally, dismiss the appeal;

– alternatively, if the appeal is not dismissed in its entirety, refer the case back to the General Court; and

– order the appellant to pay the costs incurred by Ferrero before the Court of Justice.

The appeal

18 In support of its appeal, BMB puts forward a single ground, alleging infringement of Article 25(1)(e) of Regulation No 6/2002. The ground comprises four parts.

The first part of the single ground of appeal

Arguments of the parties

19 By the first part of its single ground of appeal, BMB claims, in essence, that, in paragraph 4 of the judgment under appeal, the General Court erred in law by classifying the earlier international registration as a ‘three-dimensional mark’, whereas it is common ground that the mark was registered as a figurative mark. Thus, the General Court compared the contested design to a mark which is not the earlier international registration, but rather a three-dimensional mark assumed to be similar to that registration.

20 More specifically, BMB highlights that the examination of the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 must be based on the perception by the relevant public of the distinctive sign relied on in support of that ground together with the overall impression which the sign leaves in the mind of the public. However, it follows from the General Court’s case-law that a three-dimensional mark is not necessarily perceived by the relevant public in the same way as a figurative mark. In the first case, the public perceives a tangible object whereas, in the second case, the public sees only an image. It cannot therefore be presumed that the two signs in question are similar, even though the contested design is similar to the earlier registration.

21 BMB claims that the General Court incorrectly based its assessment of similarity and of the likelihood of confusion on the comparison of the contested design with a sign different from the earlier international registration invoked by Ferrero, and therefore committed an error of law which must result in the judgment under appeal being set aside.

22 EUIPO and Ferrero contend that the Court should reject the first part of the single ground of appeal.

Findings of the Court

23 By the first part of its...