The matter at hand

Groupe Léa Nature filed an application for registration of an EU trade mark for the word-/ figurative mark SO’BIO ETIC, which was opposed by Debonair on the basis of earlier trade marks for the word mark SO…?. After the Opposition Division had initially rejected the opposition, it was upheld by the Board of Appeal. The General Court, however, annulled the decision of the Board of Appeal, considering that the similarity caused by the common word element ‘so’ is insufficient to create confusion, because this word element, according to the General Court, has a laudatory function if followed by another word.

In the appeal brought before the ECJ, EUIPO argued that the General Court had contravened the requirement to provide reasons which permit the parties to comprehend the grounds on which the finding was based, given the fact that in the earlier marks the word element ‘so’ is not followed by another word.

The judgment of the ECJ

The ECJ holds that the General Court is required “to disclose clearly and unequivocally the reasoning followed by it, in such a way as to enable the persons concerned to ascertain the reasons for the decision taken and the Court of Justice to exercise its power of review (…)” (paragraph 32).

According to the ECJ, the General Court did not comply with this obligation as the statement of reasons in its judgment was contradictory, by stating on the one hand that the element ‘so’ has a laudatory function while on the other hand considering that that laudatory function exists when the element ‘so’ was accompanied by another word (paragraphs 36 and 37). “

The ECJ considers that “such a contradiction in the reasoning amounts to a failure to state reasons” with the result that “the parties and the Court are unable to ascertain whether, in the General Court’s analysis, the word element ‘so’ has a laudatory function only when it is used with another word or also when it is used on its own” (paragraph 36).

Consequently, the ECJ concludes that the judgment under appeal must be set aside and that the case must be referred back to the General Court.