Case C-418/16: mobile.de v EUIPO. Opinion AG Sharpston.
In this appeal, mobile.de challenges the judgment of the General Court of 12 May 2016 in which mobile.de contested two decisions of the First Board of Appeal of the EUIPO. The General Court rejected mobile.de's case in its entirety. Mobile.de now raises six ground in support of its appeal against that ruling. The Court has requested an Opinion only in relation to the matter of the sixth ground. This ground concerns the interpretation of Article 64 and 76(2) of Regulation No 207/2009 with regard to the exercise of that discretion in a situation where a Board of Appeal remits a case to the relevant EUIPO division.
According to AG Sharpston it would be incompatable with the scheme of the legislation to Article 62(2) and 76(2) of Regulation No 207/2009 in a manner which allowed departments of the Office to consider supplementary evidence in cases where the Board of Appeal has made findings of fact and issued a definitive ruling. The AG considers as follows:
"44. With regard to examining an appeal, I read Article 64(1) as referring to the situation where the Board of Appeal may exercise its discretion under Article 76(2) by taking account of supplementary evidence in accordance with this Court’s case-law. If the Board makes definitive findings of fact based on that evidence and remits the case at issue to the relevant department of EUIPO under Article 64(2), that department is bound by the Board’s ruling on appeal. It is not then open to that department to assess supplementary evidence submitted by a party on a matter that is the subject of a definitive ruling on appeal. In mobile.de’s case, the Board of Appeal’s ruling was not susceptible to further prosecution for the purposes of Article 64(2) of Regulation No 207/2009 in so far as it concerns services in Class 35 that were not ‘advertising in connection with vehicles’ or services in Class 42. Supplementary evidence in relation to those matters could not therefore be put before the Cancellation Division following the Board of Appeal’s decision to remit.
45. However, concerning the question whether there was a likelihood of confusion regarding services relating to ‘advertising in connection with vehicles’ for the purposes of Article 8(1)(b) of that regulation, the Cancellation Division was required to examine that question in accordance with the rules under Regulation No 207/2009 and the Implementing Regulation. That was not a matter that had been examined by the Board of Appeal and there had been no definitive ruling in that respect. That examination includes the power to exercise the discretion conferred by Article 76(2). It seems to me that the wording of Article 64(2) covers precisely that situation.
46. I emphasise, however, that it would be incompatible with the scheme of the legislation to construe Articles 64(2) and 76(2) of Regulation No 207/2009 in a manner which allowed departments of the Office to consider supplementary evidence in cases where the Board of Appeal has made findings of fact and issued a definitive ruling. It would be wrong to construe the words ‘in so far as the facts are the same’ as meaning that supplementary evidence may be submitted and therefore the facts are not ‘the same’ within the meaning of Article 64(2). That seems to me go beyond what is envisaged by Article 76(2). It would undermine Title VII of Regulation No 207/2009 governing the appeals procedure. It would render the decisions of the Boards of Appeal legally uncertain in all cases where there is a decision to remit. Such an interpretation would dent the judicial architecture established by Regulation No 207/2009. Furthermore, such a view would be incompatible with the practical purpose of Regulation No 207/2009 which is to protect the EU trade mark. (29) Lastly, it would be incompatible with the principle of legal certainty.
47. I therefore consider that the sixth ground of appeal should be rejected as unfounded."