Hofstede Insights v EUIPO - Geert Hofstede (HOFSTEDE INSIGHTS) (EU trade mark - Judgment) [2024] EUECJ T-429/23 (05 June 2024)

Judgment By its action under Article 263 TFEU, the applicant, Hofstede Insights Oy, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 April 2023 (Case R 2128/2022-5) (‘the contested decision’). Background to the dispute On 16 November 2020, the intervener, Geert Hofstede BV, filed with EUIPO an application for registration of an EU trade mark in respect of the word sign hofstede insights. The mark applied for covered goods and services in Classes 35 and 41 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, corresponding, for each of those classes, to the following description: – Class 35: ‘Business research and advisory services’; – Class 41: ‘Coaching in economic and management matters’. On 24 February 2021, Itim International Oy, the applicant’s predecessor, filed a notice of opposition against the registration of the mark applied for in respect of all of the services covered by that mark. The opposition was based on the following earlier rights: – the earlier Finnish non-registered mark HOFSTEDE INSIGHTS; – the Finnish trade name ‘HOFSTEDE INSIGHTS’; – the Finnish auxiliary trade, business or company names ‘Hofstede Insights’ and ‘Hofstede Insights Group’; – the domain names ‘hofstede-insights.com’ and ‘hofstede-insights.net’. The ground relied on in support of the opposition was that set out in Article 8(4) 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). On 14 September 2022, the Opposition Division rejected the opposition. On 2 November 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal dismissed the appeal. It found, first of all, that the appeal, in so far as it had been found admissible, was to be dismissed on the sole ground that the applicant had failed to substantiate any concrete arguments or failures of the Opposition Division’s reasoning from which the Board of Appeal could deduce why that division’s decision was wrong. Next, it found that, in any event, the decision of the Opposition Division rejecting the opposition had to be confirmed. More specifically, as regards the earlier right consisting in the earlier Finnish non-registered mark HOFSTEDE INSIGHTS (see the first indent of paragraph 5 above), the Board of Appeal concluded that the evidence submitted by the applicant was insufficient to prove that that mark had been used, in the course of trade of more than local significance in Finland before the relevant date, in relation to the relevant services. As to the other earlier rights which the applicant invoked, namely the Finnish trade name, the Finnish auxiliary trade, business or company names and the domain names (see second, third and fourth indents of paragraph 5 above), the Board of Appeal endorsed the Opposition Division’s findings that the applicant had failed to adduce evidence of the content of national law concerning the scope of protection of those earlier rights. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in the event that an oral hearing is convened. The intervener contends, in essence, that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(4) of Regulation 2017/1001. That plea is divided into two parts alleging (i) incorrect assessment of the use of the earlier Finnish non-registered mark referred to in paragraph 5 above (first indent), and (ii) incorrect assessment of the other earlier rights, namely the Finnish trade names, the auxiliary trade, business or company names and the domain names also referred to in that paragraph (second, third and fourth indents). EUIPO argues that both parts of the single plea are inadmissible, in so far as, regarding the first part, the action does not meet the requirements under the Rules of Procedure of the General Court and, as to the second part, the action alters the legal and factual context of the dispute, as it was brought before the Board of Appeal. In the present case, it is apparent from the grounds of the contested decision, as summarised in paragraphs 9 and 10 above, that the Board of Appeal ruled on the merits of the Opposition Division’s findings, against which the applicant’s claims are directed, only in the alternative. The Board of Appeal in fact found, first of all, in paragraph 30 of the contested decision, that the appeal should be dismissed for the sole reason that the applicant had failed to substantiate any concrete arguments or failures of the Opposition Division’s reasoning from which the Board of Appeal could deduce why the decision at issue was wrong. In that connection, the Board of Appeal points out that, in accordance with Article 22(1)(c) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the statement setting out the grounds of the appeal brought pursuant to the fourth sentence of Article 68(1) of Regulation 2017/1001 is to contain a clear and unambiguous identification of facts, evidence and arguments in support of the grounds invoked. It is also clear from the case-law, cited by the Board of Appeal, that it is the statement setting out the grounds of appeal that must make it possible to understand why the Board of Appeal is requested to annul or alter the contested decision and that, consequently, the Board of Appeal is not required to respond to arguments which are not raised in that statement (see judgment of 8 March 2023, Sympatex Technologies v EUIPO - Liwe Española (Sympathy Inside) , T‑372/21, not published, EU:T:2023:111 , paragraph 49 and the case-law cited). Similarly, it is not for the Board of Appeal to determine, by means of inferences, what are the grounds on which the appeal of which it is seised is based. (see, to that effect, judgment of 28 April 2010, Claro v OHIM - Telefónica (Claro) , T‑225/09, not published, EU:T:2010:169, paragraph 28). The Board of Appeal therefore based its decision to dismiss the appeal, principally, on the ground set out in paragraph 17 above, and then found, in the alternative, that in any event, the conclusion of the Opposition Division that the opposition had to be rejected, had to be confirmed. The ground on which the Board of Appeal relied principally would, alone, have sufficed to dismiss the appeal brought before that board. That ground is not, however, disputed by the applicant. Both parts of the single plea in law are directed solely against the grounds set out in the alternative by the Board of Appeal, that is, those on which the latter ruled on the merits of the Opposition Division’s decision rejecting the opposition. It follows that the applicant takes issue solely with those grounds of the contested decision that are included for the sake of completeness. However, according to established case-law, even if a ground proves to be erroneous, that cannot justify the annulment of the measure which it affects if it is superfluous and if other grounds exist which are sufficient to justify the measure, with the result that complaints directed against such grounds are ineffective (see judgment of 22 September 2021, Asian Gear v EUIPO - Multimox (Scooter) , T‑686/20, not published, EU:T:2021:615 , paragraph 50 and the case-law cited). Under those circumstances, since both parts of the single plea are directed against grounds included in the contested decision for the sake of completeness, they must be rejected as ineffective, without it being necessary to rule on the admissibility thereof. Consequently, the single plea must be rejected and, accordingly, the action dismissed in its entirety. Costs Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Hofstede Insights Oy to bear its own costs and pay those incurred by Geert Hofstede BV; 3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs. Schalin Nõmm Kukovec Delivered in open court in Luxembourg on 5 June 2024. V. Di Bucci M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII