Judgments nº T-126/15 of The General Court, May 24, 2016

• Resolution Date: May 24, 2016
• Issuing Organization: The General Court
• Decision Number: T-126/15

(EU trade mark - Opposition proceedings - Application for EU figurative mark Supeco - Earlier EU figurative mark SUPER COR - Relative ground for refusal - Likelihood of confusion - Extent of the examination carried out by the Board of Appeal - Goods and services on which the opposition is based - Article 8(1)(b) of Regulation (EC) No 207/2009 - Rule 15(2)(f) of Regulation (EC) No 2868/95 - Communication No 2/12) In Case T-126/15,

El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Scheffer and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Grup Supeco Maxor, SL, established in Madrid (Spain), represented by S. Martínez-Almeida y Alejos-Pita, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 4 December 2014 (Case R 1112/2014-5) relating to opposition proceedings between El Corte Inglés, SA and Grup Supeco Maxor, SL,

THE GENERAL COURT (Second Chamber),

composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 18 March 2015,

having regard to the response of EUIPO lodged at the Court Registry on 3 September 2015,

having regard to the response of the intervener lodged at the Court Registry on 21 September 2015,

having regard to the fact that no application for a hearing was submitted by the main parties within the period of three weeks following service on the parties of notification of the closure of the written part of the procedure and having decided, pursuant to Article 106(3) of the Rules of Procedure of the General Court, to rule on the action without an oral part of the procedure,

gives the following

Judgment

Background to the case

1 On 30 April 2012, the intervener, Grup Supeco Maxor, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the following figurative sign:

3 The services in respect of which registration was sought belong to, inter alia, Class 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 include, in particular, ‘auctioneering’ and services for the ‘bringing together, for others, of a variety of … goods (excluding the transport thereof) … enabling customers to conveniently view, select and purchase those goods from local businesses, including in shops, retailing of … goods’ (‘retail services’).

4 On 16 August 2012 the applicant, El Corte Inglés, SA, filed a notice of opposition to registration of the mark applied for in respect of all the services referred to in the application.

5 The opposition was based on, inter alia, the following EU figurative mark, filed on 18 June 2008 and registered on 1 February 2012 under No 6997407 in respect of goods and services belonging to, inter alia, Class 35:

6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. The notice of opposition featured a reference to, inter alia, the ‘list of goods and services’ and the ‘[opposition] [b]ased on parts of the goods and services’ followed by the following list of services in Class 35: ‘advertising; business management; business administration; office functions’.

7 On 28 February 2014 the Opposition Division partially upheld the opposition, finding that there was a likelihood of confusion between the mark applied for and the earlier mark. It refused, inter alia, registration of the mark applied for in respect of all the contested services in Class 35. Basing itself on Communication No 2/12 of 20 June 2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 7/2012), the Opposition Division took the view that the applicant’s intention was to cover all of the services included in the alphabetical list of the particular class of the Nice Classification concerned. It thus compared the services in Class 35 covered by the mark applied for with the services mentioned in the notice of opposition, as well as with the services relating to...