ORDER OF THE GENERAL COURT (Fourth Chamber)

13 July 2017 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark myBaby — Earlier EU word, and EU figurative and national word marks MAYBABY, May BaBy and MAY BABY — Ancillary appeal — Article 8(3) of Regulation (EC) No 216/96 — Merely confirmatory decision — Inadmissibility)

In Case T‑519/15,

myToys.de GmbH, established in Berlin (Germany), represented by C. Hauss-Löhde and M. Mette, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. Kunz, acting as Agent,

defendant,

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

Laboratorios Indas, SA, established in Pozuelo de Alarcon (Spain), represented by M. de Justo Bailey, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 17 June 2015 (Case R 1002/2014-2), relating to opposition proceedings between Laboratorios Indas and myToys.de,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 4 September 2015,

having regard to the response of EUIPO lodged at the Court Registry on 4 December 2015,

having regard to the response of the intervener lodged at the Court Registry of the on 2 December 2015,

having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 28 February and 3 March 2017,

makes the following

Order

 Background to the dispute

1        On 16 April 2012, the applicant, myToys.de GmbH, 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).

2        Registration as a mark was sought for the following figurative sign:

3        The services in respect of which registration was sought fall within Classes 35, 41 and 45 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 35: ‘advertising, retailing, in particular via the Internet, of goods relating to baby care, food for babies, apparatus for recording, transmission or reproduction of sound or images, babies’ bottles, dummies (teats), heaters, electric, for feeding bottles, prams (baby carriages), children’s seats, cardboard, paper, office requisites, craft supplies, paintbrushes, babies’ napkins of cellulose, baby carriers, slings for carrying infants, furniture, mats for playpens, playpens for infants, high chairs, infant walkers, nests for children’s beds or children’s playpens, containers for household and kitchen, heaters for feeding bottles, non-electric, chamber pots, driers for babies’ bottles, baby baths, textiles and textile goods, cotton cloths, bibs, clothing, footwear, headgear, babies’ napkins of textile, carpets, and wallpaper for children’s rooms, games and playthings, gymnastic and sporting articles’;

–        Class 41: ‘Education, providing of training, entertainment, sporting activities’;

–        Class 45: ‘personal and social services to meet the needs of individuals, babysitting services’.

4        The EU trade mark application was published in the European Union Trade Marks Bulletin No 98/2012 of 25 May 2012.

5        On 21 August 2012, the intervener, Laboratorios Indas, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the trade mark applied for in respect of all the services in Class 35 referred to in paragraph 3 above.

6        The opposition was based on three earlier trade marks, namely:

–        the EU word mark MAYBABY, registered under number 3 780 129 for goods in Classes 3, 5, 10, 16 and 25;

–        the Spanish word mark MAY BABY, registered under number 2 277 687 for goods in Class 10;

–        the EU figurative mark reproduced below, registered under number 3 633 161 for goods in Classes 3, 16 and 25:

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8        In response to the opposition, the applicant requested the intervener, pursuant to Article 42(2) of Regulation No 207/2009, to furnish proof that the earlier trade marks had been put to genuine use.

9        By decision of 26 February 2014, the Opposition Division, first, found that the earlier right had been shown to be genuinely used in respect of ‘nappies’ and ‘infant tissues’ in Class 16, as covered by the EU word mark registered under number 3 780 129 and by the EU figurative mark registered under number 3 633 161, and, second, upheld the opposition in part in respect of some of the contested services, namely ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’, in Class 35. The opposition was rejected as to the remainder.

10      On 10 April 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009, against the decision of the Opposition Division. The applicant claimed, in essence, that the Board of Appeal should grant the application for registration of the trade mark myBaby in respect of all the contested services in Class 35. It thus sought the annulment of the decision of the Opposition Division in so far as it upheld the opposition in respect of ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’. That appeal was registered under number R 1002/2014-2.

11      On 25 April 2014, the intervener filed a separate notice of appeal against the same decision of the Opposition Division. The intervener claimed, in essence, that the Board of Appeal should dismiss the application for an EU trade mark in respect of the services in Class 35, in respect of which the opposition has been rejected by the Opposition Division. That appeal was registered under number R 1137/2014-2.

12      In its response of 15 September 2014, lodged in connection with Case R 1137/2014-2, the applicant claimed that the Board of Appeal should, first, dismiss the appeal, and, second, register the EU trade mark myBaby in respect of all the contested services in Class 35, including the services in respect of which the opposition was upheld, namely ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’. In the context of that response, the applicant repeatedly referred to the arguments that it had elaborated in connection with Case R 1002/2014-2.

13      The Board of Appeal characterised that response of the applicant as an ancillary appeal for the purposes of Article 8(3) of Commission Regulation (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 Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 11), as amended by Commission Regulation (EC) No 2082/2004 of 6 December 2004 (OJ 2004 L 360, p. 8). Accordingly, it examined all services applied for in light of the relative ground for refusal laid down in Article 8(1) of Regulation No 207/2009.

14      By decision of 4 May 2015, as corrected by decision of 21 May 2015, and notified to the applicant on the same day (‘the decision of 21 May 2015’), the Second Board of Appeal partially upheld the intervener’s appeal in Case R 1137/2014-2. The decision of the Opposition Division was annulled in so far as it rejected the opposition in respect of ‘retailing, in particular via the Internet, of babies’ napkins of textile’ included in Class 35, and that decision was upheld in so far as it allowed the opposition in respect of ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’. The Board of Appeal also dismissed the applicant’s ancillary appeal.

15      By decision of 17 June 2015 (‘the contested decision’), the Second Board of Appeal dismissed the applicant’s appeal in Case R 1002/2014-2.

16      In the contested decision, the Board of Appeal stated, as a preliminary matter, that Case R 1002/2014-2 was joined to Case R 1137/2014-2 as it concerned the same contested mark, the same Opposition Division and the same parties. The Board of Appeal stated that the reasoning in the contested decision would be in line with that of the decision of 21 May 2015.

17      In the first place, the Board of Appeal addressed the issue of whether the Opposition Division was correct in finding that the intervener had adduced sufficient evidence to show genuine use of its earlier trade marks in respect of the goods in question in accordance with Article 42(2) and (3) of Regulation No 207/2009. It stated that it would conduct that assessment in line with Case R 1137/2014-2, in which the proof of genuine use of the earlier trade marks had also been assessed.

18      The evidence adduced for that purpose by the intervener included in particular:

–        a sworn declaration from the intervener’s financial director, in which he stated that the intervener had sold a large quantity of goods under the trade mark MAY BABY between 1 June 2007 and 31 June 2012;

–        903 invoices in Spanish dated between 7 June 2007 and 7 June 2012, issued to customers in various Spanish cities, showing that the intervener had sold certain quantities and units of infant tissues and various types of nappies under the trade mark MAY BABY;

–        more invoices, dated between 2008 and 2012, addressed to clients in other EU countries including Slovenia, Ireland and France for the sale of infant tissues and various types of nappies, under the trade mark MAY BABY;

–        a printout from the website www.cincodias.com, which lists some of the intervener’s goods, including nappies under the trade mark MAY BABY;

–        samples of packaging of nappies and infant tissues with the trade mark MAY BABY;

–        a copy of the ‘economic conditions’ signed by the intervener’s customers.

19      First, the Board of Appeal found that that evidence clearly indicated that the EU word mark MAYBABY had been used in the relevant period and that sufficient information had been provided concerning the commercial volume, duration and frequency of its use.

20      Second, the use of the earlier right in the form ‘may baby’, rather than ‘maybaby’, or in a stylised design, or even in the form of several variations depicting additional figurative elements, did not, according to the Board of Appeal, represent material alterations for the purposes of Article 15(1)(a) of Regulation No 207/2009, since those differences did not alter the distinctive character of the earlier mark in question.

21      The evidence adduced was found to be sufficient to show genuine use of the earlier right in respect of ‘nappies’ and ‘infant tissues’, but insufficient to show such use in respect of the other goods covered by Class 16.

22      In the second place, the Board of Appeal found that, in relation to the goods and services in question, the relevant public was made up of the public at large, whose level of attention was average.

23      In the third place, the Board of Appeal upheld the finding of the Opposition Division that the services at issue, namely ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’, were similar to the ‘nappies’ and ‘infant tissues’ covered by the intervener’s earlier trade mark, given that such retailing included the latter goods.

24      In the fourth place, as far as concerns the comparison of the signs, the Board of Appeal found, in essence, that, despite, first, the fact that the second letter of the earlier trade mark, namely the letter ‘a’, had no counterpart in the contested sign, and, second, the typescript and colours of the contested sign, taking into account the considerable similarity of the word elements due to the coinciding letters ‘m’, ‘y’, ‘b’, ‘a’, ‘b’ and ‘y’, the opposing marks had a high visual similarity. Phonetically, the Board of Appeal found that, irrespective of the different rules of pronunciation in different parts of the relevant territory, namely the whole of the European Union, the pronunciation of the marks coincided in respect of the letters ‘m’, ‘y’, ‘b’, ‘a’, ‘b’ and ‘y’, the same in both signs. According to the Board of Appeal, although the second letter of the earlier trade mark, namely the letter ‘a’, had no counterpart in the contested sign, that slight difference in pronunciation was alone not sufficient to lead to an overall phonetic dissimilarity between the marks at issue. The Board of Appeal therefore concluded that those marks were, at least to an average or even to a high degree, phonetically similar. The Board of Appeal adopted the Opposition Division’s conclusion that conceptually, although the earlier EU word mark MAYBABY as a whole has no meaning, the relevant public throughout the relevant territory would associate the word ‘baby’, present in both signs, with ‘a new-born, a baby or a very young child’, because it is a very basic English word, understood everywhere, and sometimes even used in non-English-speaking countries. The Board of Appeal therefore concluded that the signs were conceptually similar to the extent that they alluded to the concept of a baby. In so far as the element ‘may’ of the earlier trade mark was understood as referring to the month of May and the element ‘my’ of the trade mark applied for was a personal pronoun, the marks differed conceptually. For that part of the public that would not understand those elements, the marks would be seen as simply referring to babies. As far as concerns the distinctive character of the earlier trade mark, the intervener did not claim that the earlier trade marks were highly distinctive by virtue of use. The Board of Appeal thus found that the earlier trade mark possessed, at most, an average distinctive character as a whole, in so far as it alluded to babies born in the month of May in relation to the goods in question. Considering further that the goods covered by the earlier trade mark were goods aimed essentially at babies, the term ‘baby’ was related to the goods covered and to their end users. Therefore, it was a ‘weak part’ of the earlier word mark.

25      The Board of Appeal found that the signs at issue shared identical elements in all their relevant aspects, and concluded that they were very similar, despite the weak distinctive character of the word ‘baby’. Taking into account the interdependence between all the relevant factors, the Board of Appeal considered that there was a likelihood of confusion between the marks at issue in respect of the goods and services which were found to be similar.

26      In addition, the Board of Appeal considered that no evidence had been adduced or claim put forward concerning coexistence of the marks in question in the relevant territory, let alone that such coexistence was based on the absence of any likelihood of confusion between those marks on the part of the relevant public.

27      Since the registration of the mark applied for had been refused for the contested services in question, the Board of Appeal considered, in accordance with the principle of procedural economy, that there was no need to examine the remaining earlier rights.

 Forms of order sought

28      The applicant claims that the Court should:

–        annul the contested decision;

–        dismiss the opposition in its entirety;

–        revoke the decision of 21 May 2015;

–        order EUIPO to pay the costs.

29      EUIPO contends that the Court should:

–        dismiss the action;

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

30      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

31      In support of the action, the applicant relies on three pleas in law alleging, first, infringement of Articles 42(2) and 15(1)(a) of Regulation No 207/2009, second, infringement of Article 8(1)(b) of the same regulation and, third, infringement of Article 7(1) of Regulation No 216/96.

32      In that regard, under Article 129 of its Rules of Procedure, the Court may at any time, of its own motion, acting on a proposal from the Judge-Rapporteur after hearing the main parties, decide to rule by reasoned order on whether there exists any absolute bar to proceeding with a case, including the conditions governing the admissibility of an action (see, to that effect, order of 15 March 2016, Larymnis Larko v Commission, T‑576/14, not published, EU:T:2016:169, paragraph 13 and the case-law cited).

33      In the present case, the Court, considering that it has sufficient information from the documents in the file, has decided to give a decision without taking further steps in the proceedings.

34      In the present case, according to the decision of 21 May 2015 in Case R 1137/2014-2, the applicant was unsuccessful as far as concerned the intervener’s appeal in respect of ‘retailing, in particular via the internet, of babies’ napkins of textile’, and its own ancillary action was also dismissed as regards the registration of the trade mark in respect of all the contested services in Class 35, including the services in respect of which the opposition had been upheld by the Opposition Division, namely ‘retailing, in particular via the internet, of babies’ napkins of cellulose’ (see paragraphs 12 to 14 above).

35      It is undisputed, and as both EUIPO and the intervener maintain, the time limit for bringing an action against the decision of 21 May 2015, pursuant to Article 65(5) of Regulation No 207/2009, expired without the applicant having brought such an action. That decision therefore became final and its legality can no longer be challenged before the Court (see, to that effect, judgment of 8 February 2011, Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, EU:T:2011:33, paragraph 31 and the case-law cited).

36      Consequently, as EUIPO correctly maintains, the applicant’s third head of claim must be rejected as inadmissible.

37      As regards the first two of the applicant’s heads of claim, it must be ascertained whether the contested decision merely confirms the decision of 21 May 2015.

38      In that regard, it should be noted that a decision which merely confirms an earlier decision not challenged in due time is not an actionable measure. In order to prevent the time limit for bringing an action against the earlier decision to recommence, an action against such a confirmatory decision must be declared inadmissible. Thus, where the contested measure is merely confirmatory of an earlier measure, an action is admissible only if the measure confirmed is challenged within the procedural time limits (see order of 8 March 2012, Octapharma Pharmazeutika v EMA, T‑573/10, not published, EU:T:2012:114, paragraph 27 and the case-law cited; see also, to that effect, judgment of 24 March 2017, Estonia v Commission, T‑117/15, EU:T:2017:217, paragraph 58 and the case-law cited).

39      A decision is regarded as a mere confirmation of an earlier decision if it contains no new factors as compared with the earlier decision and if it was not preceded by any re-examination of the situation of the addressee of the earlier decision (see order of 8 March 2012, Octapharma Pharmazeutika v EMA, T‑573/10, not published, EU:T:2012:114, paragraph 54 and the case-law cited).

40      In particular, the Court has already held that a decision which merely explains the reasoning underpinning the earlier decision in greater detail must not be regarded as containing any new factors as compared with the earlier decision or as having been preceded by a re-examination of the applicant’s situation (see order of 8 March 2012, Octapharma Pharmazeutika v EMA, T‑573/10, not published, EU:T:2012:114, paragraph 54 and the case-law cited).

41      On the other hand, if a contested decision is the reply to a request in which new material facts were relied on, and whereby the administration was requested to reconsider its previous decision, which had become final, that decision cannot be regarded as merely confirmatory in nature, inasmuch as it constitutes a decision taken on the basis of those facts and thus contains a new factor as compared with the earlier decision. The existence of new material facts may justify the submission of a request for reconsideration of a previous decision which has become final. However, where the request for reconsideration is not based on new material facts, an action against a decision refusing to carry out the reconsideration must be declared inadmissible. According to settled case-law, a fact is material if it is capable of materially altering the legal situation as considered by the authors of the earlier measure, particularly by materially altering the conditions which governed the earlier measure. That is true of a factor which raises doubts as to the merits of the approach adopted by that measure (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraphs 17 and 22; see also, to that effect, judgment of 24 March 2017, Estonia v Commission, T‑117/15, EU:T:2017:217, paragraphs 59 and 60 and the case-law cited).

42      In order to determine whether and to what extent the contested decision amounts to a mere confirmation of the decision of 21 May 2015, the Court must identify the respective circumstances of the disputes which gave rise to those decisions (judgment of 8 February 2011, INSULATE FOR LIFE, T‑157/08, EU:T:2011:33, paragraph 32, and order of 6 October 2015, engineering for a better world, T‑545/14, EU:T:2015:789, paragraph 18).

43      In the first place, it is common ground that the parties in Cases R 1002/2014-2 and R 1137/2014-2 were the same, since they were the applicant and the intervener.

44      In the second place, the subject matter of the two cases overlapped in so far as the applicant sought the annulment of the decision of the Opposition Division in respect of ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’ included in Class 35. The differences in subject matter between the cases lay in the fact that, in Case R 1137/2014-2, the intervener sought the annulment of the decision of the Opposition Division in so far as it refused the opposition in respect of services other than ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’ included in Class 35.

45      In the third place, the applicant’s pleas in law, both in Case R 1002/2014-2 and Case R 1137/2014-2, were based, first, on an infringement of Article 42(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation, and, second, on an infringement of Article 8(1)(b) of Regulation No 207/2009.

46      In the fourth place, the applicant repeatedly referred in its ancillary appeal in Case R 1137/2014-2 to the arguments it elaborated in connection with its action in Case R 1002/2014-2, which explicitly referred to the arguments previously put before the Opposition Division. Those references concerned both the applicant’s line of argumentation as a whole in the action in Case R 1002/2014-2 and certain pleas in particular. For that purpose, a summary of the arguments regarding the action in Case R 1002/2014-2 was provided in an annex to the ancillary action in Case R 1137/2014-2. Consequently, the arguments set out in support of the action in Case R 1002/2014-2 were the same as those set out in support of the ancillary action.

47      In the fifth place, the reasoning in the contested decision is in large part identical to the reasoning in the decision of 21 May 2015 in so far as the decision of 21 May 2015 responds to the applicant’s ancillary appeal, as indeed the applicant, in essence, notes.

48      In the sixth place, the merely confirmatory nature of the contested decision, that is to say the absence of any re-examination or new factors, also follows from several other factors.

49      First, it appears from paragraphs 15 and 16 of the decision of 21 May 2015 that the Board of Appeal examined the application of Article 8(1)(b) of Regulation No 207/2009 in respect of all the contested services, thus including ‘retailing, in particular via the Internet, of babies’ napkins of cellulose’.

50      Second, paragraph 14 of the contested decision states that Case R 1002/2014-2 was joined to Case R 1137/2014-2 since it concerned the same mark applied for, same contested decision of the Opposition Division and the same parties, with the result that the reasoning in the contested decision would follow in line with that of the latter action.

51      Similarly, in paragraph 17 of the contested decision, the Board of Appeal specifically stated that it would examine the applicant’s claim, as regards the Opposition Division’s finding in relation to the proof of genuine use and the applicant’s submission that the earlier marks had not been used as registered, in line with Case R 1137/2014-2, in which the proof of genuine use of the earlier marks had also been assessed.

52      Third, it is also clear that the applicant knew, at the time of bringing this action, both that the decision of 21 May 2015 had become final and that the contested decision was merely confirmatory in nature, since the applicant seeks, in this action, ‘revocation’ of the decision of 21 May 2015.

53      In the seventh place, all the parties maintain, in answer to the written questions put by the Court, that as regards the claims made by the applicant, the contested decision and the decision of 21 May 2015 were identical, and that the contested decision was to be regarded as merely confirmatory of the decision of 21 May 2015. In that context, the applicant has not in fact maintained, and even less shown, that the contested decision constituted a reply to a request in which new material facts — in relation to those which underlay the earlier decision — had been presented.

54      Although the applicant claims that this action is admissible on the ground that Cases R-1002/2014-2 and R-1137/2014-2 should have been considered in joined proceedings before the Board of Appeal, in order to avoid conflicting decisions, first, suffice it to note that the applicant has maintained that the two decisions in question did not differ as regards the claims that it had made. Second, the applicant has not identified the parts of its action in Case R-1002/2014-2 which could have been assessed differently by the Board of Appeal had it considered the two actions together as joined actions.

55      The applicant has not put forward any other argument capable of calling into question the merely confirmatory nature of the contested decision and the resulting inadmissibility of its action.

56      Consequently, since the first two heads of claim in this action have been brought against a decision that is merely confirmatory of a decision which had become final, they must be rejected as inadmissible. The present action must therefore be dismissed in its entirety.

 Costs

57      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Moreover, according to Article 135(1) of the Rules of Procedure, exceptionally, if equity so requires, the General Court may decide that an unsuccessful party, in addition to bearing his own costs, is to pay only a proportion of the costs of the other party or even that he is not to be ordered to pay any costs.

58      In the circumstances of this case, in which the Board of Appeal disposed of Cases R 1002/2014-2 and R 1137/2014-2 separately and where the contested decision is merely confirmatory of the decision made in Case R 1137/2014-2, the applicant must be ordered to bear its own costs and to pay those incurred by the intervener. EUIPO shall bear its own costs.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby orders:

1.      The action is dismissed;

2.      myToys.de GmbH shall bear its own costs and pay those incurred by Laboratorios Indas, SA;

3.      European Union Intellectual Property Office (EUIPO) shall bear its own costs.

Luxembourg, 13 July 2017.

E. CoulonH. Kanninen

*      Language of the case: English.