Peek & Cloppenburg KG v European Union Intellectual Property Office (T-443/18)

Contents

Judgment of the General Court (Fourth Chamber)13 May 2020^note(EU trade mark — Opposition proceedings — Application for the EU word mark Vogue Peek & Cloppenburg — Earlier national commercial designation Peek & Cloppenburg — Relative ground for refusal — Article 8(4) of Regulation (EU) 2017/1001 — Coexistence of the national commercial designation and the mark applied for — Demarcation agreement — Application of national law by EUIPO — Suspension of the administrative proceedings — Article 70 of Regulation 2017/1001 — Rule 20(7)(c) of Regulation (EC) No 2868/95 (now Article 71(1) of Delegated Regulation (EU) 2018/625) — Manifest error of assessment)In Case T‑443/18,Peek & Cloppenburg KG, established in Düsseldorf (Germany), represented by P. Lange, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingPeek & Cloppenburg KG, established in Hamburg (Germany), represented by A. Renck, M. Petersenn and C. Stöber, lawyers,THE GENERAL COURT (Fourth Chamber),composed of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,Registrar: M. Marescaux, Administrator,having regard to the application lodged at the Court Registry on 16 July 2018,having regard to the response of EUIPO lodged at the Court Registry on 18 October 2018,having regard to the response of the intervener lodged at the Court Registry on 8 October 2018,having regard to the decisions of 27 August and 25 October 2018 refusing to join the present case and Cases T‑444/18, T‑445/18 and T‑446/18, on the one hand, and Cases T‑444/18 to T‑446/18, T‑534/18 and T‑535/18, on the other hand,further to the hearing on 4 September 2019,gives the following

JudgmentOnly the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.

Background to the dispute

1On 17 May 2002, the applicant, Peek & Cloppenburg KG (Düsseldorf), filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by 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)).

2Registration as a mark was sought for the word sign Vogue Peek & Cloppenburg.

3The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 18, 25 and 35 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, and correspond for each of those classes to the following description:– Class 18: ‘Leather and imitations of leather, and goods made of these materials (included in class 18), namely bags, handbags, wallets, purses, key cases, covers for electronic devices, travelling sets, rucksacks, small bags, umbrellas, parasols and walking sticks, whips, harness and saddlery; trunks and travelling bags’;– Class 25: ‘Clothing, footwear, headgear’;– Class 35: ‘Retail services, including via websites and teleshopping programmes, in relation to clothing, footwear, headgear, bleaching preparations and other substances for laundry use, preparations to clean, polish, degrease and abrade, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys and watches made of precious metals and their alloys, works of art made of precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, animal skins, hides, trunks and travelling bags, bags, handbags, wallets, purses, key cases, covers for electronic devices, travelling sets, rucksacks, small bags, umbrellas, parasols and walking sticks, whips, harness and saddlery; arranging and conducting of advertising events and customer loyalty programmes’.

4The trade mark application was published in Community Trade Marks Bulletin No 10/2003 of 27 January 2003.

5On 28 April 2003, the intervener, Peek & Cloppenburg KG (Hamburg), filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6The opposition was based on the commercial designation Peek & Cloppenburg, which is recognised as such in Germany and is used to manufacture and market clothing for men, women and children and accessories like belts and other leather items.

7The grounds relied on in support of the opposition were, first, those set out in Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation 2017/1001), in conjunction with Paragraph 5(2), Paragraph 6(3) and Paragraph 15(2) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (Law on the protection of trade marks and other signs) of 25 October 1994 (BGBl. 1994 I, p. 3082) (‘the Law on the protection of trade marks and other signs’), and, secondly, those set out in Article 8(4) of Regulation No 40/94, in conjunction with Paragraph 5(2), Paragraph 6(3) and Paragraph 15(3) of the Law on the protection of trade marks and other signs.

8On 16 September 2005, the Opposition Division upheld the opposition and rejected the application for registration of the EU trade mark in respect of the goods and services referred to in paragraph 3 above, on the basis of Article 8(4) of Regulation No 40/94 in conjunction with Paragraph 5(2), Paragraph 6(3) and Paragraph 15(2) of the Law on the protection of trade marks and other signs. Furthermore, it ordered the applicant to bear its own costs.

9On 15 November 2005, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 57 to 63 of Regulation No 40/94 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10By decision of 25 October 2011, the opposition proceedings were suspended on account of pilot proceedings before EUIPO relating to opposition proceedings between the applicant and the intervener (Cases R 53/2005-1 and R 262/2005-1) (‘the pilot proceedings’). In the pilot proceedings, by decisions of the First Board of Appeal of EUIPO of 28 February 2011, the oppositions based on Article 8(4) of Regulation No 40/94 were upheld and the applicant’s applications for registration of the word sign Peek & Cloppenburg were rejected.

11By two judgments of 18 April 2013, Peek & Cloppenburg v OHIM — Peek & Cloppenburg (Peek & Cloppenburg) (T‑506/11, not published, EU:T:2013:197) and Peek & Cloppenburg v OHIM — Peek & Cloppenburg (Peek & Cloppenburg) (T‑507/11, not published, EU:T:2013:198), the General Court rejected the applicant’s actions against the decisions of the First Board of Appeal of EUIPO of 28 February 2011 in the pilot proceedings. By judgment of 10 July 2014, Peek & Cloppenburg v OHIM (C‑325/13 P and C‑326/13 P, not published, EU:C:2014:2059), the Court of Justice dismissed the appeals in which the applicant sought to have those judgments set aside.

12After the definitive closure of the pilot proceedings, the present opposition proceedings were resumed.

13In other proceedings between the applicant and the intervener relating to the applicant’s German trade marks (which also include three Peek & Cloppenburg trade marks), the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), after the case was remitted to it by the Bundesgerichtshof (Federal Court of Justice, Germany), by decision of 7 July 2015 (Case I-20 U 24/07), ordered the applicant to give its consent to the cancellation of those trade marks (‘the judgment of the Oberlandesgericht Düsseldorf’). On 28 April 2016, that judgment became final after the Bundesgerichtshof (Federal Court of Justice) dismissed the application for leave to appeal on a point of law.

14On 12 January 2017, the applicant requested that EUIPO suspend the proceedings (‘the request for suspension’) until a final decision had been taken in a counter-claim for a declaratory judgment which it had brought against the intervener on 30 November 2006 (‘the counter-claim for a declaratory judgment’) before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany). By that counter-claim for a declaratory judgment, it requested that the Landgericht Düsseldorf (Regional Court, Düsseldorf) declare that it has the right to have marks derived from its commercial designation registered and to use them in the areas of Germany which have been allocated to it by a demarcation agreement concluded between the parties in 1990 and allegedly confirmed in 1992 (‘the demarcation agreement’). The demarcation agreement consists solely of maps on which the parties’ acronyms are shown and on each of which there are lines to indicate the territories which are respectively allocated to them.

15By decision of 20 April 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal of 15 November 2005 and the request for suspension.

16In the first place, the Board of Appeal referred to the cumulative conditions laid down in Article 8(4) of Regulation 2017/1001 and the conditions in Paragraph 15 of the Law on the protection of trade marks and other signs.

17In the second place, the Board of Appeal referred to the findings it had made in the pilot proceedings and referred to the reasoning in the corresponding decisions.

18In the third place, the Board of Appeal found that the commercial designation Peek & Cloppenburg was used by the intervener in the course of trade to designate its undertaking and its shops in Germany and constituted a protected commercial designation for the purposes of Paragraph 5(2) of the Law on the protection of trade marks and other signs. It added that that commercial designation, which was highly distinctive, was a right which, for the purposes of determining seniority, had been acquired prior to the date of application for registration of the mark applied for for the purposes of Paragraph 6 of the Law on the protection of trade marks and other signs, and that its use was of more than mere local significance.

19In the fourth place, first, the Board of Appeal found that there was a high degree of similarity between the intervener’s commercial designation and the mark applied for and, with regard to some of the goods and services concerned, proximity between the sectors, giving rise to a likelihood of confusion for the purposes of Paragraph 15(2) of the Law on the protection of trade marks and other signs. Secondly, to the extent that proximity between the sectors had not been proved, the Board of Appeal concluded that the use of the mark applied for would dilute or take unfair advantage of the intervener’s commercial designation, for the purposes of Paragraph 15(3) of the Law on the protection of trade marks and other signs.

20In the fifth place, as regards the argument which the applicant had not yet put forward in the pilot proceedings that it had, on the basis of the demarcation agreement, a contractual right to use the mark applied for and to have that mark registered, first, the Board of Appeal pointed out that the demarcation agreement did not bind EUIPO, but had to be applied to the parties to the contract by the court which had jurisdiction in the Member State. Secondly, it took the view that the applicant had not proved that that agreement conferred on it the right to use EU trade marks and have them registered. In that regard, it observed, first, that such rights did not arise out of the judgment of the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) and, secondly, that, even if the demarcation agreement also included the registration of trade marks, it had not been proved that that agreement also covered EU trade marks.

21In the sixth place, the Board of Appeal found, in essence, that the applicant had also not proved that the declaratory judgment sought in the counter-claim for a declaratory judgment before the Landgericht Düsseldorf (Regional Court, Düsseldorf) would have any procedural effects on the present proceedings since such a judgment would not require the intervener to withdraw the opposition it had brought before EUIPO. Furthermore, the Board of Appeal observed that the content of that counter-claim did not have any effect on the proceedings in the present case since the applicant had not proved that the demarcation agreement (which was allegedly concluded in 1990 and allegedly confirmed in 1992) conferred on it the right to use EU trade marks and have them registered and that, even if the demarcation agreement also included the registration of trade marks, it had not been proved that it included sales territories outwith Germany and EU trade marks which were not regulated until Regulation No 40/94 was enacted.

22In conclusion, the Board of Appeal dismissed the appeal and therefore upheld the opposition on the basis of the intervener’s commercial designation.

Forms of order sought

23The applicant claims that the Court should:– annul the contested decision;– order EUIPO to pay the costs.

24EUIPO contends that the Court should:– dismiss the action;– order the applicant to pay the costs.

25The intervener contends that the Court should:– dismiss the action;– order the applicant to pay the costs, including those incurred by the intervener.

Law…

Substance

42The applicant relies on four pleas in law, alleging, first, infringement of Article 8(4) of Regulation 2017/1001 in conjunction with Paragraph 15(2) of the Law on the protection of trade marks and other signs, secondly, infringement of Article 8(4) of Regulation 2017/1001 in conjunction with Paragraph 15(3) of the Law on the protection of trade marks and other signs, thirdly, infringement of Article 8(4) of Regulation 2017/1001 and, fourthly, in essence, infringement of Article 70 of Regulation 2017/1001 in conjunction with Rule 20(7)(c) of Regulation No 2868/95 (now Article 71(1) of Delegated Regulation 2018/625).

43The applicant submits, by its first three pleas, that the Board of Appeal misinterpreted Article 8(4) of Regulation 2017/1001 in conjunction with Paragraph 15(2) and (3) of the Law on the protection of trade marks and other signs inasmuch as it took account only incompletely of the substantive conditions laid down by German law. By its fourth plea, the applicant submits that the Board of Appeal infringed Article 70 of Regulation 2017/1001 in conjunction with Rule 20(7)(c) of Regulation No 2868/95 inasmuch as it made manifest errors of assessment in assessing the applicant’s request for suspension and therefore misused its powers.

44It is appropriate to examine together the first three pleas, in the context of which the applicant develops similar arguments.

The first, second and third pleas, alleging infringement of Article 8(4) of Regulation 2017/1001 in conjunction with Paragraph 15(2) and (3) of the Law on the protection of trade marks and other signs…

99It follows from all of the foregoing that the Board of Appeal did not err in finding that the applicant had not proved that the demarcation agreement conferred on it the right to have EU trade marks registered, without it being necessary to rule on the ground which is included in the contested decision for the sake of completeness that, even if the demarcation agreement includes the registration of trade marks, it has not been proved that that agreement covers EU trade marks.

100It follows that the first three pleas, alleging infringement of Article 8(4) of Regulation 2017/1001 in conjunction with Paragraph 15(2) and (3) of the Law on the protection of trade marks and other signs, must be rejected.

The fourth plea, alleging infringement of Article 70 of Regulation 2017/1001 in conjunction with Rule 20(7)(c) of Regulation No 2868/95

101The applicant submits, in essence, that the Board of Appeal infringed Article 70 of Regulation 2017/1001 in conjunction with Rule 20(7)(c) of Regulation No 2868/95 by deciding to reject its request for a suspension of the proceedings.

102In that regard, first, the Board of Appeal found, in paragraphs 38 and 39 of the contested decision, that an additional suspension was not justified since the counter-claim for a declaratory judgment before the Landgericht Düsseldorf (Regional Court, Düsseldorf) sought only a declaratory judgment and could not result in the intervener being required to withdraw its opposition.

103Secondly, the Board of Appeal pointed out that the content of the counter-claim did not have any effect on the present proceedings. In that regard, it stated that the applicant had not proved that the demarcation agreement conferred on it the right to use trade marks and have them registered and that, even if the demarcation agreement also included the registration of trade marks, it had not been established that that agreement also covered sales territories outwith Germany (paragraphs 34 to 37, 40 and 41 of the contested decision). The Board of Appeal added that the applicant had neither claimed nor proved that the demarcation agreement also included EU trade marks (paragraph 42 of the contested decision). Furthermore, the Board of Appeal observed that other grounds which would have made an additional suspension of the proceedings seem appropriate had not been put forward in a well-founded manner and it therefore rejected the request for suspension.

104The applicant criticises all of those findings, submitting that they are based on only partial consideration of the facts to be taken into account, failure to have regard to relevant aspects of German substantive law and failure to have regard to the effect of the counter-claim for a declaratory judgment that it has brought. It submits that the Board of Appeal’s reasoning is altogether incorrect since it does not address aspects of the law relating to undertakings that have the same name and the intervener’s inconsistent conduct, and does not include any weighing of the interests of each of the parties. It maintains that, consequently, the Board of Appeal made manifest errors of assessment in assessing its request for suspension and thus misused its powers.

105In particular, and in the first place, the applicant states that the Board of Appeal’s finding that the purpose of the counter-claim for a declaratory judgment brought before the Landgericht Düsseldorf (Regional Court, Düsseldorf) is not an obligation to withdraw the notice of opposition is incorrect. According to the applicant, the finding that it wishes to obtain, namely that it is permitted to apply for registration of the mark applied for, is very much wider in scope than an action seeking the withdrawal of the notice of opposition. It maintains that it would follow from that finding that the protection against a likelihood of confusion and the protection of reputation, which the intervener asserts against the mark applied for by relying on its commercial designation, would not exist under the German law that is relevant in that regard and that the declaratory judgment sought would therefore constitute a direct decision on the merits of the intervener’s application to prevent it from using the mark applied for in the present case.

106In the second place, the applicant submits that the Board of Appeal’s finding that it had neither claimed nor proved that the demarcation agreement also included EU trade marks is incorrect since it expressly stated, in support of its request for suspension of 12 January 2017, that its counter-claim for a declaratory judgment also concerned EU trade marks. It maintains that it has proved that, since the form of order sought in the counter-claim for a declaratory judgment included in its wording, namely ‘trade marks’, EU trade marks. Furthermore, it argues that the Board of Appeal’s finding that the demarcation agreement did not deal clearly with the question of whether that agreement included the whole of the territory of the European Union is irrelevant because an agreement the objective of which is to preclude a likelihood of confusion in Germany, by allocating, in that Member State, geographical areas in which the use of word marks is permitted, is also relevant as regards EU trade marks.

107In the third place, the applicant submits that the Board of Appeal’s finding that the content of the counter-claim for a declaratory judgment also has no effect on the present proceedings is incorrect. It maintains that if the decision taken on the basis of the counter-claim for a declaratory judgment established that it had the right to apply for registration of the mark applied for, then the use of that mark would not be ‘without authorisation’ according to Paragraph 15(2) of the Law on the protection of trade marks and other signs, or ‘without due cause’ or exercised in an ‘unfair’ manner according to Paragraph 15(3) of the Law on the protection of trade marks and other signs. It submits that, consequently, the counter-claim for a declaratory judgment, if it were upheld, would result in a final decision, taking the new facts into account, on the merits of the intervener’s application to prohibit it, under Paragraph 15(2) and (3) of the Law on the protection of trade marks and other signs, from using the mark applied for. By contrast, it argues that the earlier decisions given in similar proceedings between the parties are irrelevant with regard to the counter-claim for a declaratory judgment since the new facts submitted in the present case could not yet have been taken into account in those decisions.

108EUIPO and the intervener dispute those arguments.

109It must, at the outset, be borne in mind that the Board of Appeal has a broad discretion as to whether or not to suspend proceedings. Rule 20(7)(c) of Regulation No 2868/95, applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, illustrates that broadness of discretion by providing that EUIPO may suspend opposition proceedings where a suspension is appropriate under the circumstances. Suspending proceedings thus remains optional for the Board of Appeal, which will do so only if it considers it appropriate. Proceedings before the Board of Appeal are therefore not automatically suspended as a result of a request for suspension made by a party before it (see judgment of 21 October 2015, Petco Animal Supplies Stores v OHIM — Gutiérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 31 and the case-law cited).

110It must also be borne in mind that the fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (see judgment of 21 October 2015, PETCO, T‑664/13, EU:T:2015:791, paragraph 32 and the case-law cited).

111In that regard, it is evident from the case-law that, in exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose EU trade mark is contested, but also those of the other parties. The decision whether or not to suspend the proceedings must follow upon a weighing of the competing interests (see judgment of 21 October 2015, PETCO, T‑664/13, EU:T:2015:791, paragraph 33 and the case-law cited).

112It is in the light of those principles that it must be examined whether the factors that the Board of Appeal took into consideration enabled it to conclude, without making a manifest error of assessment or misusing its powers, that the proceedings in the present case should not be suspended.

113In that regard, in the first place, the Board of Appeal found, in essence, that the counter-claim for a declaratory judgment sought only a declaratory judgment and could not therefore result in the intervener being required to withdraw its opposition. Although that finding is not incorrect, it must nevertheless be pointed out that it is not on its own sufficient to justify the rejection of the request for suspension. As the applicant correctly submits, if the decision taken on the basis of the counter-claim for a declaratory judgment establishes that it had the right to apply for registration of marks derived from its commercial designation, in particular of the word sign Peek & Cloppenburg, the Board of Appeal would then have to take that outcome into account and might thus find that the applicant had proved that registration of the mark applied for was not ‘without authorisation’ according to Paragraph 15(2) of the Law on the protection of trade marks and other signs, or ‘without due cause’ or exercised in an ‘unfair’ manner according to Paragraph 15(3) of the Law on the protection of trade marks and other signs which, according to German law, would preclude protection against the likelihood of confusion invoked. It follows that, even though the declaratory judgment sought by the applicant cannot result in the intervener being required to withdraw its notice of opposition and even though EUIPO is not bound by the decision of the Landgericht Düsseldorf (Regional Court, Düsseldorf), that declaratory judgment must nevertheless be taken into account in the context of the application of Article 8(4) of Regulation 2017/1001 in conjunction with Paragraph 15(2) and (3) of the Law on the protection of trade marks and other signs and, consequently, also in the context of the weighing of the competing interests with regard to the request for suspension. Consequently, the Board of Appeal was right in not merely finding that the counter-claim for a declaratory judgment could not result in the intervener being required to withdraw its opposition, but in subsequently adopting a position on the inferences to be drawn, with regard to the proceedings in the present case, from the content of the counter-claim before the Landgericht Düsseldorf (Regional Court, Düsseldorf).

114As regards, in the second place, the scope of the demarcation agreement, it must, as a preliminary point, be stated that the contested decision is marred by material inaccuracies inasmuch as the Board of Appeal stated, in paragraphs 41 and 42 of the contested decision, that the applicant had neither claimed nor proved that the demarcation agreement also included EU trade marks and that it had not been established that that agreement also covered sales territories situated outwith Germany. First, contrary to what is stated in paragraph 42 of the contested decision, the applicant rightly points out that it claimed in support of its request for suspension of 12 January 2017 that the demarcation agreement also related to EU trade marks. Consequently, the Board of Appeal erred in finding that the applicant had not made such a claim. Furthermore, the applicant is right in stating that it has proved that, since the form of order sought in the counter-claim for a declaratory judgment included EU trade marks in its wording. Secondly, and also in agreement with the applicant’s arguments, it must be pointed out that the Board of Appeal’s finding that it has not been established that the demarcation agreement also covers sales territories situated outwith Germany is irrelevant, since that finding does not necessarily make it possible to conclude that that agreement does not include EU trade marks. It cannot be ruled out a priori that the parties to the coexistence agreement are seeking to find a solution to the situation covered by the counter-claim for a declaratory judgment that the applicant has brought before the Landgericht Düsseldorf (Regional Court, Düsseldorf), namely the right to have trade marks, inter alia EU trade marks, registered with a view to use in areas which have been allocated to the applicant in that contract, even though those areas are confined to a single Member State. Since it is clear from the case-law of the Court of Justice that proof of genuine use of an EU trade mark does not necessarily have to be cross-border in scope (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 50), it is not, a priori, inconceivable that the parties to that agreement are seeking to register EU trade marks, even though, according to the terms in which the agreement is couched and at the time of registration, the use of those EU trade marks is envisaged in only one Member State. However, that incorrect assessment on the part of the Board of Appeal would result in the annulment of the contested decision only if the Board of Appeal’s examination as to the likelihood of success of the counter-claim for a declaratory judgment before the Landgericht Düsseldorf (Regional Court, Düsseldorf) and its finding that the applicant had not proved that the demarcation agreement conferred on it the right to use EU trade marks and have them registered proved to be incorrect themselves (see, to that effect, judgment of 30 November 2016, PALLADIUM PALACE IBIZA RESORT & SPA, T‑217/15, not published, EU:T:2016:691, paragraphs 36 and 50).

115In that regard, it is useful to bear in mind that, as regards proceedings brought against an earlier mark, on which an opposition was based, it has already been held that a prima facie analysis of the likelihood that such proceedings would succeed was part of the broad discretion conferred on the Board of Appeal, as referred to in paragraph 109 above, and was justified by the objective of preventing the instrument of suspension from being used for delaying purposes (judgment of 21 October 2015, PETCO, T‑664/13, EU:T:2015:791, paragraph 34; see also, to that effect, judgment of 14 February 2019, Beko v EUIPO — Acer (ALTUS), T‑162/18, not published, EU:T:2019:87, paragraph 44). Consequently, where the likelihood of success of an application for a declaration of invalidity, which it is for the Board of Appeal to determine, is prima facie regarded as low, the weighing of the parties’ interests necessarily tends in favour of the opponent’s legitimate interest in obtaining, without delay, a decision on the opposition (judgment of 21 October 2015, PETCO, T‑664/13, EU:T:2015:791, paragraph 35).

116It is not apparent in the present case from the material in the case file and the applicant’s observations that the Board of Appeal made any error in finding, in paragraphs 34 to 41 of the contested decision, after a prima facie analysis of the likelihood of success of the counter-claim for a declaratory judgment, that the content of that counter-claim had no effect on the proceedings in the present case since the applicant had not proved that the demarcation agreement conferred on it the right to use EU trade marks and have them registered.

117Contrary to what the applicant submits, the earlier decisions referred to in paragraph 13 above, which relate to the applicant’s German trade marks, are not irrelevant, but may serve as a basis for a prima facie analysis of the likelihood of success of the counter-claim for a declaratory judgment. Consequently, as EUIPO rightly submits, the counter-claim for a declaratory judgment brought before the Landgericht Düsseldorf (Regional Court, Düsseldorf) seeks, in essence, to clarify the same points of law as those that have already been definitively dealt with in the proceedings before the Landgericht Düsseldorf (Regional Court, Düsseldorf), the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) and the Bundesgerichtshof (Federal Court of Justice), namely the question as to whether the demarcation agreement conferred on the applicant the right to use EU trade marks and have them registered.

118As has been stated in paragraph 99 above, the Board of Appeal, taking into account the case-law in the pilot proceedings before the General Court and the Court of Justice and also the case-law in the parallel cases before the German courts (Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) and the Bundesgerichtshof (Federal Court of Justice)), did not err in finding that the applicant had not proved that the demarcation agreement conferred on it the right to have EU trade marks registered.

119Thus, taking into account the material criterion arising out of the expressions ‘without authorisation’ and ‘without due cause’ and out of the term ‘unfair’ within the meaning of Paragraph 15(2) and (3) of the Law on the protection of trade marks and other signs and the new facts which the applicant put forward in that regard, in particular regarding the alleged rights arising out of the demarcation agreement, aspects of the law relating to undertakings that have the same name and the intervener’s allegedly inconsistent conduct, the Board of Appeal did not err in finding that the applicant had not proved that the demarcation agreement conferred on it the right to have EU trade marks registered, which made it possible to conclude the prima facie analysis of the likelihood of success of the counter-claim for a declaratory judgment by stating that that likelihood of success had not been established.

120Consequently, although it erred in finding, in paragraphs 41 and 42 of the contested decision, that the applicant had neither claimed nor proved that the demarcation agreement also included EU trade marks and that it had not been established that that agreement also covered sales territories situated outwith Germany, the Board of Appeal did not make a manifest error of assessment or misuse its powers in finding, in the context of observations relating to the demarcation agreement and the requests for suspension (paragraphs 34 to 43 of the contested decision), that the content of the counter-claim for a declaratory judgment before the Landgericht Düsseldorf (Regional Court, Düsseldorf) had no effect on the present proceedings and that the applicant had not proved that the demarcation agreement conferred on it the right to use trade marks, including EU trade marks, and have them registered (see, to that effect, judgment of 30 November 2016, PALLADIUM PALACE IBIZA RESORT & SPA, T‑217/15, not published, EU:T:2016:691, paragraphs 36 and 50).

121It follows from all of the foregoing that the fourth plea in law must be rejected and that the action must therefore be dismissed in its entirety.…

Operative part

On those grounds,THE GENERAL COURT (Fourth Chamber)hereby:

1.Dismisses the action;

2.Orders Peek & Cloppenburg KG (Düsseldorf) to pay the costs.

Delivered in open court in Luxembourg on 13 May 2020.