Bimbo v EUIPO - Bottari Europe (BimboBIKE) (EU trade mark - Judgment) [2023] EUECJ T-509/22 (24 May 2023)

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(EU trade mark – Opposition proceedings – Application for EU figurative mark BimboBIKE – Earlier national word mark BIMBO – Relative ground for refusal – Detriment to reputation – Article 8(5) of Regulation (EU) 2017/1001)

Bimbo, SA, established in Madrid (Spain), represented by J. Carbonell Callicó, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

composed of A. Marcoulli, President, S. Frimodt Nielsen (Rapporteur) and V. Tomljenović, Judges,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 By its action under Article 263 TFEU, the applicant, Bimbo, SA, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 June 2022 (Case R 2110/2021-1) (‘the contested decision’).

2 On 17 July 2020, the other party to the proceedings before the Board of Appeal of EUIPO, Bottari Europe Srl, filed with EUIPO an application for registration of an EU trade mark in respect of the following figurative sign:

3 The mark applied for initially covered goods and services in Classes 3, 8, 9, 11, 12, 21, 28 and 35 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 3: ‘Cleaning preparations for bicycles; Detergents; Soap; Grease-removing preparations’;

– Class 9: ‘Spectacles; head guards; Spectacle cases; Computers for use with bicycles; Work gloves; Gloves for protection against accidents’;

– Class 12: ‘Bicycles; Electric bicycles; Sports bicycles; Touring bicycles; Mountain bikes; Motorised bicycles; Inner tubes and casings; Tyres; Bicycle bells; Rims; Wheels; Wheel rims; Bicycle chains; Shock absorbers for bicycles; Bicycle brakes; Direction indicators for bicycles; Handlebars for bicycles; Pumps for bicycle tyres; Bicycle spokes; Dress guards for bicycles; Bicycle saddles; Bicycle frames; Bicycle kickstands; Pedals; Bicycle mudguards; Ropes for luggage carriers for vehicles; Anti-theft devices; Luggage carriers; Safety seats for children, for vehicles; rear-view mirrors for bicycles; Tubeless tyres for bicycles; Bicycle tyres; Gears for bicycles; Bicycle wheels; Grip tape for bicycle handlebars; Bicycle handlebar grips; Covers for foot pedals on cycles; Bicycle carriers; Change-speed gears [bicycle parts]; Motorised scooters; Mobility scooters; Electrically operated scooters; Motor scooters; Trolleys [vehicles]; Tow trucks for bicycles; Trailers for bicycles; Bags for bicycles; Storage baskets for bicycles; Saddlebags adapted for bicycles; Rack trunk bags; Telephone / tablet computer / GPS holders for bicycles; Water bottle cages for bicycles; Drinking flasks for bicycles; Inner tube repair kits for bicycles’;

– Class 28: ‘Scooters [toys]; Tricycles for infants [toys]; scooters for kids; Athletic protective knee pads for cycling; Athletic protective elbow pads for cycling; Gloves for games; Gloves for sporting purposes; Protective gloves for bicycles’;

– Class 35: ‘Online retailing or wholesaling relating to bicycles and bicycle accessories; Consumer services and information; Presentation of goods on communications media; Presentation of bicycles and accessories on the internet; Advertising’.

4 On 27 November 2020, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

5 The opposition was based on, inter alia, the earlier Spanish word mark BIMBO, filed on 5 January 2006 and registered on 16 June 2006 under number M2689432 for goods in Classes 5 and 29 and for, inter alia, the following goods in Class 30: ‘Coffee-based beverages and coffee milk-based beverages, milk powder, cocoa, chocolate, cereals, fruits, sugar, herbs or spices or its combinations; tea-based beverages, infusions; cocoa, cocoa based beverages, chocolate and chocolate powder extracts, granulated or liquid; sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, cookies, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard, pepper, vinegar, condiments; fruit sauces, spices; herbs for drinks preparations; blends that mainly consists in herbs with dried fruits addition for beverages preparations; herbs extracts, not for medical use; ice’. A reputation was claimed for goods in Class 30 in Spain.

6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of 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).

7 On 11 October 2021, the Opposition Division partially upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001 and dismissed the application for registration in respect of the following goods:

– Class 28: ‘Scooters [toys]; Tricycles for infants [toys]; scooters for kids; Gloves for games’.

8 Registration of the mark applied for was, however, allowed in respect of the other goods and services covered by the application for registration.

9 On 13 December 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as the opposition had been rejected as regards the other goods and services covered by the application for registration.

10 By the contested decision, the Board of Appeal dismissed the appeal on the basis of Article 8(5) of Regulation 2017/1001 and ordered the applicant to pay the costs incurred for the purposes of the appeal proceedings.

11 In essence, the Board of Appeal found, as the Opposition Division had done, that the earlier mark had a very strong reputation in Spain for bread. It also confirmed the findings of the Opposition Division that visually the signs were highly similar and displayed at least a high degree of phonetic similarity. It also stated that the earlier mark had normal distinctiveness.

12 Next, the Board of Appeal, in essence, carried out an overall assessment of the relevant factors for the purposes of establishing the existence of a link between the marks at issue. In that regard, it found there was no link between the marks as regards the goods and services related to cycling. In particular, the Board of Appeal rejected the applicant’s argument that such a link could be established because the relevant consumers were likely to eat bread and that they could purchase the goods covered by the application for registration in large supermarkets at the same time as bread, considering that the goods covered by the application for registration were not everyday consumer articles and were very far-removed from the world of bread. Moreover, the Board of Appeal found that it had not been demonstrated that producers of bread also diversified into the field of cycling. It also noted that the applicant did not criticise the Opposition Division’s assessment as regards the services covered by the application for registration.

13 Accordingly, the Board of Appeal ruled out that use of the mark applied for may take unfair advantage of the distinctiveness of the earlier mark or of its repute acquired for bread. It also stated that it was unlikely that the earlier mark, which had a reputation for certain qualities of bread or foodstuffs in general, transfers the image of those qualities onto the goods and services covered by the mark applied for. In view of the divergence between the goods and services covered by the application for registration and the goods covered by the earlier mark, the relevant public, which would not associate them, would also not be influenced by the earlier mark’s reputation when confronted with the goods and services covered by the application for registration. According to the Board of Appeal, the other party would therefore gain no commercial advantage from the earlier mark’s reputation.

– order EUIPO and the intervening party to pay the costs, including those relating to the proceedings before the Board of Appeal.

– order the applicant to pay the costs incurred by it in the event that an oral hearing is convened.

16 The applicant raises, in essence, two pleas in law, alleging, first, infringement of Article 8(5) of Regulation 2017/1001 and, secondly, infringement of Article 109 of Regulation 2017/1001.

The first plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001

18 Under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

19 As regards the risk referred to by Article 8(5) of Regulation 2017/1001, it must be pointed out that, although it is true that the primary function of a mark is that of an indication of origin, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys. To that effect, each mark has an inherent economic value which is independent of and separate from that of the goods or services for which it is registered. The messages which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation 2017/1001 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).

20 It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that: first, the signs must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54 and the case-law cited).

21 It is in the light of those preliminary considerations that the arguments raised by the applicant in support of the present plea must be examined. In the first place, the applicant relies on the great similarity of the signs and the likelihood of association linked to it. In the second place, it highlights the reputation of the earlier mark and the risk of detriment caused to that reputation. In the third place, it submits that there are several contradictions in the assessment of the link between the marks carried out by EUIPO.

22 At the outset, it should be stated that the Board of Appeal’s assessment under Article 8(5) of Regulation 2017/1001 was carried out from the viewpoint of the relevant Spanish public, concerned by the earlier national mark in respect of which reputation was claimed.

23 It should be noted that the degree of visual or phonetic similarity defined by the Board of Appeal is not disputed. The parties each adopt the Board of Appeal’s findings in the contested decision that, first, the sign applied for is visually very similar to the earlier sign and, secondly, those signs display at least a high degree of phonetic similarity. As the parties make clear, there is no need to call into question those findings which are correctly based on the information referred to in that regard in the contested decision.

24 It should also be noted that the parties neither refer to nor, a fortiori, dispute the absence of conceptual similarity between the signs, the Board of Appeal merely recalling, in the contested decision, the finding made by the Opposition Division that the signs are conceptually dissimilar. To the extent that that finding is not expressly set out by the Board of Appeal at the stage of assessing the link between the marks, it must be held that the absence of conceptual similarity between the signs has not played an essential role in that assessment compared to the degree of visual and phonetic similarity which have been established in the contested decision.

25 The applicant relies on the high, even extremely high reputation of the earlier mark for bread in Spain. In particular, it argues that a high reputation per se already constitutes an indication of risk or unfair advantage by the mark applied for in relation to each of the goods and services that are not similar to those in respect of which the earlier mark is registered. The more immediately the earlier mark is brought to mind, the greater the likelihood that the use of the sign applied for is taking unfair advantage of, or is detrimental to, the repute of the earlier mark.

26 In addition, the applicant observes that it must prove that the use of the mark applied for takes unfair advantage of the distinctive character or the reputation of its earlier mark or is detrimental to that distinctive character or that repute. In the present case, there is, according to the applicant, a likelihood of tarnishment or degradation of the earlier mark, in so far as that mark is so well known that, when reading the word ‘bimbo’, the public will immediately think of the applicant’s mark. According to the applicant, the mark applied for, which is very similar to the earlier mark, weakens the earlier mark and makes it lose its direct association with food products and, more specifically, bread. The applicant also claims that there is a likelihood of parasitism, since the mark applied for rides on the coat-tails of a mark with a reputation.

27 In that regard, it is apparent from the contested decision that, as the Opposition Division had done previously, the Board of Appeal found that the earlier mark enjoyed a ‘very strong reputation in Spain in relation to “bread” in Class 30’.

28 The parties state that they share that finding, which does not need to be called into question.

29 The parties nevertheless fail to agree on the consequences to be drawn from the strength of the reputation established by the Board of Appeal as regards the assessment of whether the detriment referred to in Article 8(5) of Regulation 2017/1001 exists. The applicant claims, in that respect, that the ‘very strong reputation’ of the earlier mark, as observed by the Board of Appeal, equates to an ‘exceptionally high reputation’ which suffices to establish a detriment to the interest protected by Article 8(5) of Regulation 2017/1001. For its part, EUIPO asserts that other factors than solely the strength of the earlier mark are relevant for the assessment of whether there is such a detriment in the present case.

30 So far as the principles are concerned, it is possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment to the earlier mark or of unfair advantage being taken of it by the mark applied for is so obvious that the opposing party does not need to put forward and prove any other fact to that end (judgment of 17 March 2010, Mäurer + Wirtz v OHIM – Exportaciones Aceiteras Fedeoliva (tosca de FEDEOLIVA), T‑63/07, EU:T:2010:94, paragraph 40).

31 Nonetheless, it is also possible that the mark applied for does not, at first sight, appear capable of giving rise to one of the risks covered by Article 8(5) of Regulation 2017/1001 with respect to the earlier mark with a reputation, even though it is identical with or similar to the earlier mark, in which case the non-hypothetical, future risk of detriment or unfair advantage must be established by other evidence, which it is for the opposing party to put forward and prove (see judgment of 17 March 2010, tosca de FEDEOLIVA, T‑63/07, EU:T:2010:94, paragraph 40 and the case-law cited).

32 As EUIPO correctly contends, the evidence submitted by the applicant during the opposition proceedings and adopted in the contested decision does not make it possible to establish that the very strong reputation of the earlier mark in Spain for bread was comparable to that of a mark which has an exceptionally high reputation within the meaning of the abovementioned case-law.

33 In that regard, unlike the findings made in other cases, that evidence is not capable of showing that the earlier mark is inherently very distinctive and recognised in practically every context (see, to that effect, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 51, and of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraph 86). It is indeed apparent from the different documents submitted by the applicant during the opposition proceedings that they relate either to bread or the food sector and not to other sectors, and that they remain too general or too temporally limited to make it possible to establish a perception of the earlier mark in contexts other than that of food.

34 Consequently, taking into account, inter alia, the evidence submitted as regards the earlier mark’s reputation, the Board of Appeal was required to assess the existence of an alleged detriment to the interest protected by Article 8(5) of Regulation 2017/1001 in the light of all the factors regarded as relevant and not only the strength of the earlier mark’s reputation. The applicant cannot therefore claim that it did not need to put forward and prove other factual elements than the strength of the earlier mark’s reputation to establish the probability of a future, non-hypothetical risk of detriment to the earlier mark or of unfair advantage taken by the mark applied for.

The link between the marks at issue and the detriment referred to in Article 8(5) of Regulation 2017/1001

35 The applicant argues that the assessment of the link between the marks at issue by the Board of Appeal contains several contradictions. Thus, according to the applicant, it is contradictory to find, at the Opposition Division stage, that there was a link between the marks as far as concerns only some goods, while not finding, at the same stage and at the Board of Appeal stage, that link in respect of other goods. According to the applicant, those goods are nevertheless all intended for the same public and have the same distribution channels, even if they may be positioned in different sections in supermarkets.

36 Accordingly, both the scooters, tricycles, drinking bottles and similar goods and the bicycles and the other goods covered by the application for registration could, according to the applicant, be purchased in a supermarket at the same time as everyday shopping items, including bread. To claim, as the Board of Appeal does in paragraph 42 of the contested decision, that the purchase of a bicycle in a supermarket is not an everyday shopping item is inconsistent with the reasoning used to refuse the application for registration as far as concerns ‘scooters [toys]; tricycles for infants [toys]; scooters for kids or gloves for games’ in Class 28 which are then equally goods not forming part of everyday shopping items.

37 Likewise, the applicant argues that it is contradictory to state, as the Board of Appeal does in paragraph 43 of the contested decision, that ‘the purpose, the manufacturers and the distribution channels [of the goods in respect of which the opposition is rejected] are clearly different, even when offered in the same supermarkets, as alleged by [the applicant], they are placed in very different sections’, since such an argument has not prevented the Opposition Division from upholding the opposition so far as concerns detergents, soap and grease-removing preparations in Class 3, which are also positioned in very different sections to the place where a supermarket offers bread.

38 Moreover, the applicant submits that it cannot be claimed that the goods covered by the application for registration can be found only in specialised shops and that, consequently, they do not overlap with the goods of the earlier mark. In order to rebut that claim, the applicant produces three screenshots. The first shows that the applicant markets a protein energy bar, the other two that the protein products, including energy bars, are marketed by other producers on two online sales websites specialised in cycling.

39 It should be noted at the outset that, according to settled case-law, the detriment referred to in Article 8(5) of Regulation 2017/1001, where it occurs, is the consequence of a certain degree of similarity between the mark applied for and the earlier mark, by virtue of which the public concerned makes a link between them, that is, establishes a link between them even though it does not confuse them (see, to that effect, judgment of 25 May 2005, Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS), T‑67/04, EU:T:2005:179, paragraph 41 and the case-law cited; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 30 and the case-law cited). The existence of such a link on the part of the relevant public between the mark applied for and the earlier mark is therefore an essential condition for the application of that provision (see judgments of 10 May 2007, Antartica v OHIM – Nasdaq Stock Market (nasdaq), T‑47/06, not published, EU:T:2007:131, paragraph 53 and the case-law cited, and of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited).

40 It is also apparent from the case-law that the existence of a link between the marks at issue on the part of the relevant public must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include: the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26, and judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 21; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42).

41 According to the case-law, it is conceivable that the relevant public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, with the result that it will not establish any link between those marks. Furthermore, even if the relevant public as regards the goods or services for which the marks at issue are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Accordingly, the nature of the goods or services for which the marks at issue are registered must be taken into consideration for the purposes of assessing whether there is a link between those marks (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 48 to 50).

42 In the absence of such a link on the part of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 27 and the case-law cited).

43 In the present case it must be noted, as EUIPO contends, that the applicant’s argument is not capable of calling into question the merits of the reasoning set out by the Board of Appeal in the contested decision, following an assessment of all the relevant factors, in order to establish that there is no link between the marks at issue.

44 The Board of Appeal, in order to avert the risks of detriment alleged by the applicant, correctly took into account, from the viewpoint of the relevant Spanish public, not only the degree of similarity of the signs and the strength of the earlier mark’s reputation, but also the degree of closeness between the goods and services in the light of the relevant public and the degree of the earlier mark’s distinctiveness.

45 Accordingly, in that assessment, the Board of Appeal duly noted that there was a high degree of visual and phonetic similarity between the signs (see paragraph 23 above) and that the earlier mark had a very strong reputation in Spain for bread. The applicant cannot therefore claim that those factors were not taken into account in the analysis carried out by the Board of Appeal.

46 The Board of Appeal was also correct in finding that the earlier mark had a normal distinctive character and that it had not been demonstrated that the relevant public could establish a link between the goods or services at issue, since, in particular, the goods and services covered by the application for registration were too far removed from the goods in respect of which the earlier mark had a reputation.

47 In that regard, it should be recalled from the outset that the applicant does not set out any argument concerning the services covered by the application for registration and merely criticises the degree of closeness or dissimilarity between the goods in respect of which the application for registration has not previously been dismissed by the decision of the Opposition Division and the goods in respect of which the earlier mark has a reputation.

48 As regards the assessment of the degree of closeness or dissimilarity between the goods at issue, it should be noted that the Board of Appeal took account of the applicant’s argument that it was possible for the relevant public to purchase in supermarkets both bread and the goods covered by the application for registration, those goods covered by the application for registration relating to the field of cycling in general. However, the Board of Appeal also found that that argument was not decisive given that, in those supermarkets, the goods at issue were offered in very different sections, namely the bakery section as opposed to the sport or DIY sections (see paragraphs 42 and 43 of the contested decision).

49 Furthermore, the Board of Appeal made clear that bread, an everyday shopping item, came within another category of goods than the goods covered by the application for registration, namely bicycles and related goods which could not be regarded as everyday shopping items. Here, the Board of Appeal emphasised the lack of any material evidence adduced by the applicant making it possible to establish the existence of a link, for the relevant public or even for producers of bread, between bread and the goods coming within the field of cycling (see paragraphs 42 to 49 of the contested decision). The applicant also does not set out any relevant argument against that reasoning in the present proceedings.

50 The arguments submitted by the applicant against that part of the contested decision are intended either to reiterate its argument by relying solely on the reputation of the earlier mark or to allege the existence of contradictions between the Board of Appeal’s reasoning as regards the goods in respect of which the opposition has not been upheld and that of the Opposition Division as regards the goods in respect of which the opposition has been upheld.

51 First, as regards the reputation of the earlier mark, as has been stated in paragraphs 32 and 33 above, although it is common ground that the earlier mark BIMBO has a strong reputation for bread in Class 30, that reputation does not go beyond that class of goods. The reputation of the earlier mark does not therefore enable the relevant public to establish a link between the goods and services at issue.

52 Secondly, as regards the existence of contradictions between the Board of Appeal’s reasoning and that of the Opposition Division, it must be stated that the Board of Appeal took a decision on different goods to those on which the Opposition Division itself previously took a decision. In that regard, it should be noted that the subject of the action brought by the applicant against the decision of the Opposition Division did not concern the Opposition Division’s assessment in respect of those goods. In the action brought by the applicant, the Board of Appeal had therefore not taken into consideration those goods for its assessment of the degree of closeness or dissimilarity between the goods at issue.

53 It is in the light of those considerations that the Board of Appeal stated that, inasmuch as bread and goods relating to the field of cycling came within two distinct worlds, the relevant public was not likely to establish a link between the marks which is detrimental to the applicant.

54 Lastly, so far as concerns the applicant’s claim that the Board of Appeal incorrectly alleged that the goods covered by the application for registration could be found only in specialised shops, it must be stated that the Board of Appeal did not make such a finding in its assessment. By contrast, the Board of Appeal stated, in its contested decision, that supermarkets sold bicycles, the marketing of those goods therefore not being limited to specialised shops. In the present case, it is rather apparent from the contested decision that this is an argument raised by the Opposition Division.

56 In any case, first, it must be recalled that the Court’s function is not to review the facts in the light of documents adduced for the first time before it. According to settled case-law, the purpose of actions before the Court is to review the legality of the decisions of the Boards of Appeal within the meaning of that provision, the legality of which must be assessed in the light of the information available to those boards when they adopted those decisions (see, to that effect, judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited). Therefore, as EUIPO contends, the three screenshots produced by the applicant as regards protein energy bars, which have been submitted for the first time before the Court, must be rejected as inadmissible. Secondly, it may also be noted that the relevance of such evidence appears to be disputable in the present proceedings since that evidence does not, in any event, concern bread or the goods covered by the application for registration.

57 Accordingly, the Board of Appeal was entitled to dismiss the action brought by the applicant.

58 It follows from all of the above that the first plea must be rejected as unfounded.

The second plea in law, alleging infringement of Article 109 of Regulation 2017/1001

59 The applicant argues that the Board of Appeal infringed Article 109 of Regulation 2017/1001 as regards the costs incurred by the other party for the purposes of the appeal proceedings. According to the applicant, since the other party to the appeal proceedings did not participate in those proceedings (see paragraph 16 of the contested decision), it is not logical to make the applicant bear an amount of EUR 550 by way of representation costs which have not been incurred.

60 In the present case, it should first of all be borne in mind that the Board of Appeal ordered the applicant ‘to bear the costs incurred by the [other party] in the appeal proceedings amounting to EUR 550’, first, stating that, pursuant to Article 109(1) of Regulation 2017/1001 and Article 18 of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), it was for the applicant, ‘as the losing party’, to bear the costs incurred by the other party in the appeal proceedings. Secondly, the Board of Appeal found that the costs concerning the appeal proceedings consisted of ‘[the other party’s] costs of professional representation of EUR 550’. Thirdly, it noted that the Opposition Division had ordered each party to support its own costs as regards the opposition proceedings. The Board of Appeal has therefore decided not to amend that decision and to order the applicant to bear the costs incurred by the other party before the Board of Appeal for the purposes of the appeal proceedings in the amount of EUR 550.

61 Next, it must be observed that Article 109(1) of Regulation 2017/1001 provides that ‘the losing party in opposition proceedings … or appeal proceedings shall bear the fees paid by the other party [and] all costs incurred by the other party that are essential to the proceedings, including … the remuneration of a representative …, within the limits of the scales set for each category of costs in the implementing act [adopted] in accordance with paragraph 2 of this Article’. It is apparent from Article 18(1)(c)(iii) of Implementing Regulation 2018/626 that the maximum rate for representation costs incurred by the successful party and borne by the losing party as regards appeal proceedings is fixed at EUR 550.

62 Likewise, Article 109(7) of Regulation 2017/1001 states, first, that, when the costs to be paid are limited to the fees paid to EUIPO and the representation costs, the Board of Appeal is to fix the amounts to be paid pursuant to, inter alia, paragraph 1 of this article, and, secondly, that, in such a case, representation costs are to be awarded at the level laid down in the implementing act adopted pursuant to paragraph 2 of this article and ‘irrespective of whether they have been actually incurred’.

63 As the Court noted in the judgment of 1 February 2017, Gómez Echevarría v EUIPO – M and M Direct (wax by Yuli’s) (T‑19/15, not published, EU:T:2017:46, paragraph 113), in relation to provisions then in force, the content of which is to be found, in essence, in the regulation applicable in the present case, none of those provisions ‘made the fixing of the costs of representation conditional on prior proof or justification by the parties and, in particular, the successful party’. Accordingly, the Court found that, since the representation costs were fixed in a decision of the Board of Appeal, in accordance with the provisions relating to the allocation of costs, no justification was required as regards the existence of representation costs or their amount.

64 More recently, the Court observed that, although it is true that Article 109(7), in fine, of Regulation 2017/1001 sets out that representation costs are to be awarded at the maximum level laid down, ‘irrespective of whether they have been actually incurred’, the reference contained in that provision to the first sentence of that paragraph and, therefore, to ‘payment’ of representation costs necessarily limits the automatic and standard field of application of such a provision where the successful proprietor took part in the administrative procedure only to a limited extent (judgment of 27 March 2019, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata), T‑265/18, not published, EU:T:2019:197, paragraph 60).

65 In that case, the Court observed that the successful party had not lodged any submissions before the Cancellation Division or before the Board of Appeal. Accordingly, to order the applicant to bear the costs which the other party had been unable or unwilling to incur, given that the other party remained passive throughout the administrative procedure, would be tantamount, in essence, to distorting the meaning of Article 109(1) and (7) of Regulation 2017/1001 (judgment of 27 March 2019, Formata, T‑265/18, not published, EU:T:2019:197, paragraphs 61 and 62).

66 It must however be noted, as EUIPO correctly contends, that, unlike what may have been observed in the case referred to in the preceding paragraph, the other party took part in the administrative procedure, albeit to a limited extent, but to an extent which attests to the fact that it had been informed of the proceedings and had even asked itself to participate more actively. It is indeed apparent from EUIPO’s administrative file that the other party did not remain passive throughout the duration of the proceedings. Its representative intervened once, on 8 June 2021, before the Opposition Division, in order to request an extension of the time limit. That representative also remained the same throughout the entire administrative procedure and could receive all documents communicated in that respect.

67 In such circumstances, the fact that the other party did not submit any observations before the Opposition Division or before the Board of Appeal is insufficient to find that that party has not incurred representation costs in respect of the proceedings before the Board of Appeal which have not been warranted and may be arbitrarily fixed by the Board of Appeal pursuant to and within the limits of the applicable regulation.

68 It follows from all of the above that the second plea must be rejected. Since neither of the pleas put forward by the applicant in support of its claims is well founded, the action must be dismissed in its entirety.

69 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

70 In the present case, although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that the parties are summoned to attend an oral hearing. Since no such hearing was held in the present case, it is appropriate to order each party to bear its own costs.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Bimbo v EUIPO - Bottari Europe (BimboBIKE) (EU trade mark - Judgment) [2023] EUECJ T-509/22 (24 May 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T50922.html Cite as: [2023] EUECJ T-509/22, ECLI:EU:T:2023:281, EU:T:2023:281

Court of Justice of the European Communities (including Court of First Instance Decisions)