The Advocate General of the European Court М. BOBEK has issued an opinion in the case C‑702/18P Primart Marek Łukasiewicz v EUIPO. The case concerns the following:

On 27 January 2015, „Primart” filed an application for registration of an EU trademark with EUIPO for the following figurative sign:

The goods in respect of which registration was sought are in Class 30: ‘Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas, cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; processed grains, starches, and goods made thereof, baking preparations and yeasts; crackers’.

On 29 April 2015, Bolton Cile España, SA, filed a notice of opposition to the registration of the mark applied for in respect of all the goods referred to in the previous point. The opposition was based in particular on the Spanish trademark PRIMA, registered on 22 September 1973 under number 2 578 815 and renewed on 9 April 2013, designating goods in Class 30 and corresponding to the following description: ‘Sauces and condiments; coffee; tea; cocoa; sugar; rice; tapioca; sago, artificial coffee; flour and preparations made from cereals; bread; biscuits; cakes; pastry and confectionery; edible ices; honey; treacle; yeast, baking-powder, salt; mustard; pepper; vinegar; ice’. The ground relied upon in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

On 2 September 2016, the Opposition Division dismissed the opposition in its entirety. However, following an appeal filed by Bolton Cile España, by decision of 22 June 2017, the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision, upheld the opposition, refused the trademark application and ordered Primart to bear the costs incurred in the course of the opposition and appeal proceedings.

The Board of Appeal held, as regards the earlier Spanish mark, that the relevant territory for analysing the likelihood of confusion was Spain and that the relevant public was the public at large in that Member State. Having compared the signs, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public. In that context, it observed that the word ‘prima’ means ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer. By contrast, the mark applied for lacked any meaning. The Board of Appeal also stated that the earlier national mark’s level of intrinsic distinctive character was average. In its view, the Spanish consumer would not understand the word ‘prima’ as a word denoting the excellence of something, as is the case in other languages of the European Union (such as German or Dutch).

On 24 August 2017, Primart brought an action for annulment against the contested decision before the General Court. In its application, Primart alleged an infringement of Article 8(1)(b) of Regulation No 207/2009.

On 12 September 2018, the General Court dismissed the action, upholding the Board of Appeal’s findings with respect to the existence of a likelihood of confusion between the two signs. In that context, the General Court considered Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark to be inadmissible, in accordance with Article 76(1) of Regulation No 207/2009, in so far as they had not been put forward before the Board of Appeal.

In its appeal before the Court of Justice, lodged on 9 November 2018, Primart asks the Court to set aside the judgment under appeal, annul the contested decision of the Fourth Board of Appeal of EUIPO, order EUIPO and Bolton Cile España to pay the costs of the proceedings before the Board of Appeal and the General Court, and order EUIPO to pay the costs of the proceedings before the Court of Justice.

The Advocate’s opinion:

In my view, Article 76(1) of Regulation No 207/2009 cannot be read as obliging the Board of Appeal to refrain from examining matters of law or fact that, despite not having been specifically raised by one of the parties, are inextricably linked to those raised by the parties.

For example, once a given matter has been put before it, the Board of Appeal cannot be expected to turn a blind eye to provisions of Regulation No 207/2009 that, although not referred to by the parties, are applicable to the situation. Similarly, the legal reasoning that the Board of Appeal ought to follow to rule on a given question raised by the parties might require it to go through various steps. The fact that the parties might not have discussed one or more of those steps does not mean that the Board of Appeal cannot touch upon them.

Against that background, the EU Courts have made clear that there are a number of issues that, despite not having been the subject of the parties’ submissions in the context of an opposition procedure, should nonetheless be addressed by EUIPO and, as a consequence, maybe raised, even for the first time, before the General Court.

That may be the case, inter alia, in relation to questions concerning the distinctiveness of an earlier trademark by reference to which it is alleged that the mark applied for gives rise to a likelihood of confusion.

That finding does not result in an infringement of Article 188 of the Rules of Procedure of the General Court, as argued by Bolton Cile España. The arguments submitted by Primart relating to the intrinsic distinctive character of the earlier mark pertained to an issue that had been addressed by the Board of Appeal and could therefore properly be put before the General Court. In the contested decision, the Board of Appeal found the distinctive character of the earlier mark to be average, taking account of the meaning of the word ‘prima’ and the manner in which that word would be understood by the relevant public (paragraphs 22 and 27 of the contested decision).

In conclusion, Primart’s ground of appeal, relying on a breach of Article 76(1) of Regulation No 207/2009, is well-founded.