Judgments nº T-369/15 of The General Court, February 17, 2017

• Resolution Date: February 17, 2017
• Issuing Organization: The General Court
• Decision Number: T-369/15

(EU trade mark - Opposition proceedings - Application for the EU word mark Paloma - Earlier EU figurative mark Paloma - Relative ground for refusal - Likelihood of confusion - Article 8(1) of Regulation (EC) No 207/2009) In Case T-369/15,

Hernández Zamora, SA, established in Murcia (Spain), represented by J.L. Rivas Zurdo and I. Munilla Muños, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,

defendant,

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

Rosen Tantau KG, established in Uetersen (Germany), represented by R. Kunze and G. Würtenberger, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 21 April 2015 (Case R 1697/2014-2), relating to opposition proceedings between Hernández Zamora and Rosen Tantau,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of the deliberation, of G. Berardis, President, D. Spielmann and P.G. Xuereb (Rapporteur), Judges,

Registrar: A. Lamote, Administrator,

having regard to the application lodged at the Court Registry on 10 July 2015,

having regard to the response of EUIPO lodged at the Court Registry on 18 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 1 February 2016,

having regard to the Court’s written question to the parties and their replies to that question lodged at the Court Registry on 22 September, 3 and 11 October 2016,

further to the hearing on 26 October 2016,

gives the following

Judgment

Background to the dispute

1 On 8 March 2013, the intervener, Rosen Tantau KG, filed an application for registration of a European Union trade mark at the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the word sign Paloma.

3 The goods in respect of which registration was applied for are in Class 31 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 to the following description: ‘Roses and rose plants; propagation material of roses’.

4 The EU trade mark application was published in the Community Trade Marks Bulletin No 68/2013 of 10 April 2013.

5 On 7 May 2013, the applicant, Hernández Zamora, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 against registration of the mark sought in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier EU figurative mark, registered on 20 March 2000 under number 1067289 in respect of goods in Class 31 of the Nice Agreement, corresponding, in English, which was the language of the proceedings before EUIPO, to the description, ‘Fruits, garden herbs, fresh’ and reproduced below:

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8 On 25 June 2014, the Opposition Division rejected the opposition.

9 On 3 July 2014, the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10 By decision of 21 April 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the ground that there was no likelihood of confusion. Regarding the relevant public, the Board of Appeal held that that public consisted of the general public of the European Union and that it had at least a normal level of attention. Regarding the comparison between the goods at issue, it held that ‘roses and rose plants; propagation material of roses’ covered by the mark applied for, were non-edible, living organisms which tended to have aesthetic purposes, whereas ‘fruits, garden herbs, fresh’, covered by the earlier mark, were clearly intended for human consumption and usually had culinary purposes. The Board concluded that the nature and intended use of those goods were very different. It added that, in view of those differences, it was unlikely that the average consumer would think that the same undertaking was responsible for the production of those goods, and that the opponent had not provided any evidence to call into question the finding that the goods in question were not complementary. It also held that the goods covered by the earlier mark were fresh food items that were sold either by greengrocers’ shops or on local markets. Furthermore, it held that the process of planting, cultivating, growing, preserving, etc. the goods covered by the earlier mark was clearly different from that of the goods covered by the mark applied for and that, even when those goods were sold together, for example in supermarkets, they were normally placed in different sections. Finally, it held that those goods could not be used interchangeably, were not in competition with each other, and their distribution channels differed significantly. The Board of Appeal concluded that the goods at issue were different. As to the global assessment of the likelihood of confusion, the Board of Appeal held that the goods at issue were different and that, therefore, the opposition based on Article 8(1)(b) of Regulation No 207/2009 must be dismissed on that ground alone.

Forms of order sought

11 The applicant claims, in essence, that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

12 EUIPO and the intervener contend that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

13 At the hearing on 26 October 2016, EUIPO’s representative produced registration certificates for figurative marks that contained the word element ‘paloma’, which were issued to the applicant by national trade mark offices. The applicant and the intervener received copies of those certificates and had the opportunity of commenting on their production. They did not object to the certificates being placed in the case file.

Law

14 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see the judgment of 9 July 2003, Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17 At the outset, it should be recalled that the Board of Appeal considered that the relevant public was composed of the general public of the European Union, with a level of attention that was at least normal.

18 The Court must concur with that finding of the Board of Appeal which, moreover, has not been disputed by the parties.

19 However, the applicant submits that the Board of Appeal was wrong to conclude that there was no similarity between the goods at issue.

20 In that regard, it submits that the Board of Appeal should have taken into account the fact that the signs at issue are very similar when it compared the goods at issue. According to the applicant, in accordance with the principle of interdependence, where the signs at issue are very similar, the comparison of the goods must be less strict or rigorous. It also submits, relying on the judgment of 23 October 2002, Oberhauser v OHIM - Petit Liberto (Fifties) (T-104/01, EU:T:2002:262, paragraph 49), that it is conceivable that the targeted public could consider the goods covered by the mark applied for as belonging to a new range of goods different from the goods covered by the earlier mark, but coming from the same undertaking as the latter. In addition, it argues, in essence, that the goods in question are similar because they are all goods of plant origin belonging to Class 31 and because it is well known that those goods are grown in greenhouses and that they may be sold in the same establishments. In addition, it emphasises that, as stated in the Explanatory Note to the ninth edition of the Nice Classification relating to Class 31, the goods in that class are land products which have not been prepared for consumption, live animals and plants, and foodstuffs for animals, and that all the goods in question in the present case are such products.

21 EUIPO and the intervener dispute the applicant’s arguments.

22 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the...