Judgments nº T-596/15 of The General Court, February 17, 2017

• Resolution Date: February 17, 2017
• Issuing Organization: The General Court
• Decision Number: T-596/15

(EU trade mark - Opposition proceedings - International registration designating the European Union - Figurative trade mark POCKETBOOK - Earlier national figurative marks POCKET - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-596/15,

Batmore Capital Ltd, established in Tortola (British Virgin Islands), represented by D. Masson, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Univers Poche, established in Paris (France), represented by F. Dumont, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 30 July 2015 (Case R 1952/2014-1), relating to opposition proceedings between Univers Poche and Batmore Capital,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 19 October 2015,

having regard to the response of EUIPO lodged at the Court Registry on 4 January 2016,

having regard to the response of the intervener lodged at Court Registry on 19 January 2016,

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

gives the following

Judgment

Background to the dispute

1 On 24 March 2010, Western Graphics, Inc., established in Rockville, Maryland (United States), filed an application for an international registration in respect of the sign POCKETBOOK, pursuant to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22) (‘the Protocol relating to the Madrid Agreement’), with the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva (Switzerland) through the United States Patent and Trademark Office. That application for an international registration was based on registration No 3675976, which had taken place on 1 September 2009 in the United States, but no priority was, however, claimed. It designated, inter alia, the European Union as the territory in which protection was sought. The registration in the international register of WIPO took place on 12 April 2010 under the number 1034872 and has a date of 24 March 2010.

2 On 29 April 2010, that international registration was notified to 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). Furthermore, as is apparent from WIPO’s letter to EUIPO of 25 February 2015, the applicant, Batmore Capital Ltd, is, for the purposes of the present proceedings, the successor to Western Graphics, following the transfer of all of the rights relating to that international registration. That transfer was preceded by the transfer, on 10 May 2012, from Western Graphics to Pocketbook USA, Inc., which is located in Overland Park, Kansas (United States).

3 The sign covered by the international registration is reproduced below:

4 The goods covered by the international registration are in Class 9 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: ‘Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files’.

5 The international registration in question was published in Community Trade Marks Bulletin No 79/2010 of 3 May 2010.

6 On 2 February 2011, the intervener, Univers Poche, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009, read in conjunction with Article 156 of that regulation, to the international registration, in so far as it designated the European Union, in respect of all the goods referred to in paragraph 4 above.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.

8 As regards Article 8(1)(b) and (5) of Regulation No 207/2009, the opposition was based, first, on earlier figurative mark No 93488013, which was registered in France on 14 October 1993 in respect of goods and services in Classes 16, 38 and 41 of the Nice Agreement corresponding to the following description: ‘Paper, cardboard and goods made from these materials, namely books, letterhead, catalogues, order forms, envelopes; radio or television programs, editing services of books, newspapers and magazines, educational services and entertainment services’ and is reproduced below:

9 Secondly, the opposition was based on earlier figurative mark No 93680456, which is reproduced below and was registered in France on 1 October 2009 in respect of goods and services in Classes 9, 16, 38 and 41 of the Nice Agreement corresponding to the following description:

- Class 9: ‘Pre-recorded data carriers in the form of disks, diskettes, magnetic tapes, audio and video tapes, CD-ROM, digital disks, magnetic disks, optical disks, compact disks (audio-video), DVDs, all digital magnetic or optical data carriers; electronic publications; software (recorded programs); electronic databases’;

- Class 16: ‘Reading sheets, educational sheets, periodical publications including information letters, instructional and teaching material (except apparatus) including boxes consisting both of books or booklets and of audio and or video supports such as CD-ROMs and video disks’;

- Class 38: ‘Providing internet chat-rooms services; downloading services of data (information, images, sounds) through a global computer network, through computer networks and/or via a computer site on communication networks; providing on-line electronic publications services namely downloading services, electronic transmission and diffusion of texts, messages, information, sounds, images and data; transmission of information contained in electronic catalogues; providing access to online shopping websites more specifically for books’;

- Class 41: ‘Information services in education, teaching, reading; literature, inter alia for teachers; training and teaching services inter alia by correspondence and through computer networks; conception and distribution of training and teaching units (training); edition and publication of sheets, reading sheets, educational sheets, catalogues and brochures, posters, on every supports, including electronic and digital supports; on-line publication of newspapers, magazines, books, sheets, catalogues and brochures; providing on-line electronic publications, not downloadable; publication of texts, other than publicity texts on every supports; organization services of exhibitions, fairs, shows and every other exhibitions for cultural or educational purposes, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums; organization services of competitions in education, entertainment, recreation, with or without distribution of price or awarding of honour; party planning and organization (entertainment); leisure services’:

10 As regards Article 8(4) of Regulation No 207/2009, the opposition was based on the domain name ‘pocket.fr’ and certain goods, services or activities for which the mark or sign was allegedly used in the course of trade. In that regard, the intervener had claimed the right to prohibit the use of the contested sign according to Article L. 711-4 of the French Intellectual Property Code (Code de la propriété intellectuelle français).

11 On 11 March 2011, the examiner notified Western Graphics of a provisional refusal of protection in the European Union of the sign covered by the international registration, in accordance with Article 5 of the Protocol relating to the Madrid Agreement and Rule 115 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). The provisional refusal was based on the fact that an opposition had been filed against that registration.

12 By decision of 30 May 2014, the Opposition Division upheld the opposition in respect of all of the goods at issue, finding, in essence, that there was a likelihood of confusion between the sign covered by the contested international registration and earlier French trade mark No 93680456 (‘the earlier mark’).

13 On 28 July 2014, Pocketbook USA, which was, at that time, the proprietor of the international registration at issue (see paragraph 2 above), filed a notice of appeal, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

14 By decision of 30 July 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, first, it found that, for reasons of procedural economy, it was appropriate first to examine the opposition in relation to the earlier mark. Secondly, it defined the relevant territory as being France. Thirdly, as regards the goods at issue, it found, first, that the goods in Class 9 covered by the earlier mark, which were aimed at the reasonably well informed and reasonably observant and circumspect general public, and the goods in the same class covered by the international registration were similar. Secondly, as regards the goods and services in Classes 16, 38 and 41 covered by the earlier mark, the Board of Appeal found that there was a certain degree of similarity...