The matter at hand
BSH filed an application for registration of an EU trade mark for the word-/ figurative mark COMPRESSOR TECHNOLOGY. LG filed an opposition against this EU trade mark application on the basis of its earlier trade marks for the word mark KOMPRESSOR. The Opposition Division of EUIPO upheld the opposition in respect of certain goods.
BSH filed a notice of appeal against this decision, but LG did not. Instead, in its response to the grounds of appeal, LG submitted that some of the goods that had been considered dissimilar were in fact similar and that, consequently, the application for registration at issue should also have been rejected in respect of those goods. The First Board of Appeal of EUIPO dismissed BSH’s appeal, but upheld LG’s claim regarding some of the goods that had been considered dissimilar, which claim it classified as an ‘ancillary’ appeal under Article 8(3) of Regulation 216/96 laying down the rules of procedure of the Boards of Appeal.
In the appeal brought before it, the General Court dismissed the single plea of BSH that the Board of Appeal of EUIPO had not taken sufficient account of the weak distinctive character of the earlier national trade marks of LG which would result from the fact that the sign KOMPRESSOR is descriptive in respect of goods containing a compressor, such as vacuum cleaners, air conditioners and refrigerators.
BSH appealed this decision before the ECJ, arguing that the General Court should not have given its (implicit) approval to the classification by the Board of Appeal of LG’s response as an ‘ancillary’ appeal which had led the Board of Appeal to refuse registration of the trade mark at issue to a greater extent than the Opposition Division had. According to BSH, only an appeal complying with the conditions laid down in Article 60 of Regulation 216/96 could have justified extending the rejection of the application beyond the rejection in the decision of the Opposition Division.
Secondly, BSH complained that the General Court relied on an erroneous understanding of the concept of likelihood of confusion, by in effect holding that, if two trade marks coincide as regards a purely descriptive element, that is sufficient to give rise to such a likelihood, thereby leading to the monopolisation of a purely descriptive indication.
The judgment of the ECJ
The ECJ dismisses the first plea of BSH as inadmissible on the ground that BSH had not raised this plea before the General Court: “In accordance with settled case-law, to allow a party to put forward for the first time before the Court of Justice a plea and arguments which it did not raise before the General Court would be to authorise it to bring before the Court of Justice, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the General Court. In an appeal, the jurisdiction of the Court of Justice is thus confined to review of the findings of law on the pleas and arguments debated before the General Court (see, in particular, judgment of 21 September 2010, Sweden and Others v API and Commission, C‑514/07 P, C‑528/07 P and C‑532/07 P, EU:C:2010:541, paragraph 126 and the case-law cited)” (paragraph 43).
Therefore - although it is apparent from paragraph 45 of the judgment that the ECJ is of the opinion that the Board of Appeal infringed the adversarial principle laid down in Articles 63(2) and 75 of Regulation 216/96 by upholding LG’s so-called ‘ancillary’ appeal without having placed BSH in the position to put forward any observations in response thereto – the ECJ has no choice but to dismiss the first plea.
Regarding BSH’s second plea, the ECJ holds that “although it is true that the more distinctive the earlier mark the greater the likelihood of confusion will be, such a likelihood of confusion cannot, however, be precluded where the distinctive character of the earlier mark is weak” (paragraph 62). “Consequently, even in a case involving an earlier mark of weak distinctive character, the General Court may hold that there is a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered” (paragraph 63).
As regards the argument advanced in this regard by BSH that this leads to the monopolisation of a purely descriptive indication, “it must be stated that it is not Article 8(1)(b) of [Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark] but Articles 7(1)(b) and (c) and 51 of that regulation and Article 3(1)(b) and (c) of [Trade Mark] Directive 2008/95 which are intended to avoid such monopolization” (paragraph 65). “In so far as it concerns earlier national marks, this means that in opposition proceedings the validity of national marks may not be called into question” (paragraph 66).
“Therefore, assuming that an earlier national mark is in fact descriptive in respect of some of the goods for which it has been registered and that its protection leads to improper monopolisation of the descriptive indication in question, such a consequence must be remedied not by an application of Article 8(1)(b) of [Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark] excluding those goods as a matter of principle from the protection which that provision confers on the earlier marks, but by invalidity proceedings brought in the Member State concerned by virtue of Article 3(1)(b) and (c) of [Trade Mark] Directive 2008/95” (paragraph 68).
Consequently, the second plea is dismissed as well and the contested decision is upheld.