Judgments nº T-353/07 of Court of First Instance of the European Communities, November 30, 2009

• Resolution Date: November 30, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-353/07

In Case T‑353/07,

Esber, SA, established in Burceña‑Baracaldo (Spain), represented by T. Villate Consonni, J. Calderón Chavero and M. Yañez Manglano, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard‑Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Coloris Global Coloring Concept, established in Villeneuve‑Loubet (France), represented by K. Manhaeve, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 28 June 2007 (Case R 1060/2006‑1), concerning opposition proceedings between Coloris Global Coloring Concept and Esber, SA,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),

composed of J. Azizi, President, E. Cremona (Rapporteur) and S. Frimodt Nielsen, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 13 September 2007,

having regard to the response of OHIM lodged at the Registry of the Court on 29 January 2008,

having regard to the response of the intervener lodged at the Registry of the Court on 24 January 2008,

further to the hearing on 8 July 2009,

gives the following

Judgment

Background

1 On 20 August 2002, the applicant, Esber, SA, filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), 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 Community trade mark (OJ 2009 L 78, p. 1)).

2 The application concerned the registration of the figurative sign reproduced below:

3 The goods in respect of which registration was sought are, inter alia, in Classes 2 and 16 under 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 2: ‘Paints, lacquers and dyes; thinners; enamels and aluminium powder for painting; binding preparations for paints’;

– Class 16: ‘Publications; books, magazines, periodicals; printed matter; paper or plastic not included in other classes, in the form of sheets or bags, printed or not, for wrapping or packaging; labels; paintbrushes, artists’ materials, adhesives for stationery or household purposes; pencils and drawing implements’.

4 On 4 August 2003, the Community trade mark application was published in Community Trade Marks Bulletin No 64/2003.

5 On 31 October 2003, Allios S.A. gave notice of opposition to registration of the trade mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009). The opposition was directed against the goods in Class 2 covered by the mark applied for, and against the goods ‘artists’ materials, paintbrushes, pencils and drawing implements’ in Class 16.

6 The opposition was based on the earlier national word mark COLORIS, registered in France, on 12 February 1998, under No 98/717642, covering goods in Class 2 and corresponding to the following description: ‘Paints; varnishes (except insulating varnishes); lacquers (paints); preservatives against rust and against deterioration of wood; colorants; mordants (not for metal, not for seeds); raw natural resins; metals in foil and powder form for painters, decorators, printers and artists’.

7 The grounds relied on in support of the opposition were those under Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 Subsequently, during the proceedings before OHIM, the earlier mark was transferred to the intervener, Coloris Global Coloring Concept.

9 On 14 June 2006, the Opposition Division of OHIM upheld the opposition in part and rejected the application for registration for all the goods in Class 2 covered by the trade mark applied for. However, the Opposition Division rejected the opposition in relation to the goods in Class 16 covered by the trade mark applied for.

10 On 1 August 2006, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division inasmuch as it rejected the application for registration. In its appeal, the applicant claimed that the Opposition Division had assessed incorrectly the evidence of genuine use of the earlier mark submitted by the intervener.

11 By decision of 28 June 2007 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It found, in particular, that evidence of genuine use of the earlier mark had been produced.

Forms of order sought

12 The applicant claims that the Court should:

– annul the contested decision;

– reject the opposition and register the trade mark applied for;

– order OHIM to pay the costs.

13 OHIM and the intervener contend that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

14 In support of its action, the applicant relies on a single plea, alleging infringement of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94 (now Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009).

Arguments of the parties

15 The applicant claims that the Board of Appeal erred in finding that the evidence submitted by the intervener during the administrative procedure was sufficient to prove genuine use of the earlier mark in France.

16 The applicant claims, first, that, in the evidence submitted by the intervener, the mark COLORIS never appears on its own, but exclusively in complex forms, such as ‘coloris gcc’, ‘coloris global coloring concept’ or ‘coloris gcc global coloring concept’, together with an image...