The matter at hand
Primart filed an application for a figurative EU trade mark for – in short – natural sweeteners, baking preparations and crackers in class 30. Spanish company Bolton Cile España filed a notice of opposition based on the Spanish trade mark PRIMA for the same goods in class 30. The ground relied upon was based on Article 8(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. After the dismissal of the opposition, Bolton Cile España filed a notice of appeal with the EUIPO. The Fourth Board of Appeal annulled the Opposition Division’s decision, causing the trade mark to be refused. Among others, stating that “the Spanish consumer would understand the word ‘prima’ as meaning ‘female cousin’ or ‘ bonus payment’, and not as denoting the excellence of something, as in the case in other languages of the European Union” (paragraph 17).
Primart brought an action for annulment of the contested decision before the General Court alleging an infringement of Article 8(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark; however, the General Court dismissed the action. In particular, because Primart’s argument concerning the weak distinctive character of the earlier mark should be inadmissible based on Article 76(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. In this case, Primart submits that the General Court infringed Article 76(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark “by declaring its argument concerning the weak distinctive character of the earlier mark inadmissible on the ground that that argument had been put forward before it for the first time” (paragraph 37).
The judgment of the ECJ
The ECJ rules that the General Court made an error of law by declaring that Primart’s argument “concerning the allegedly weak distinctive character of the earlier mark inadmissible on the ground that that argument had been put forward before it for the first time” (paragraph 47).
In the present case, Primart does not dispute the General Court’s finding that it did not argue the inherent distinctiveness of the earlier trade mark, but submits that that was an issue, which the Board of Appeal was required to examine in any event.
The ECJ primarily confirms that the matters put before the General Court depend on the subject matter of the proceedings before the Board of Appeal. The ECJ states that it is true that the EUIPO is “restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, so that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and the relevant facts and evidence presented by the parties”. This does not alter the fact that “the Board of Appeal is required to decide on all issues which, in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of that regulation and in respect of which it has all the information required in order to be able to take a decision, even if no element of law related to those issues has been relied on by the parties before it.” (paragraph 41).
The ECJ concludes that the assessment of the inherent distinctive character of the earlier mark constitutes an issue of law, which is necessary to ensure the correct application of the regulation. The General Court made an error of law, by declaring the appellant’s argument concerning the allegedly weak distinctive character of the earlier mark inadmissible on the ground that that argument had been put forward before it for the first time.
Consequently the ECJ rules that the judgment under appeal should be set aside on the ground of inadequate reasoning (paragraph 62).