Judgments nº T-276/15 of The General Court, March 14, 2017

• Resolution Date: March 14, 2017
• Issuing Organization: The General Court
• Decision Number: T-276/15

(EU trade mark - Opposition proceedings - Application for an EU figurative mark - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-276/15,

Edison SpA, established in Milan (Italy), represented by D. Martucci, F. Boscariol de Roberto and I. Gatto, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Hanf and A. Folliard-Monguiral, acting as agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Eolus Vind AB (publ), established in Hässleholm (Sweden),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 24 February 2015 (Case R 2358/2013-1), relating to opposition proceedings between Edison and Eolus Vind,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 26 May 2015,

having regard to the response lodged at the Court Registry on 8 September 2015,

having regard to the reply lodged at the Court Registry on 23 December 2015,

further to the hearing on 29 November 2016,

gives the following

Judgment

Background to the dispute

1 On 16 November 2011, Eolus Vind AB (publ) 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 Registration as a mark was sought for the following figurative sign:

3 The goods and services in respect of which registration was sought are in Classes 4, 11, 36, 37, 39, 40, 42 and 45 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 4: ‘Electric energy emanating from wind power’;

- Class 11: ‘Plants for the production of renewable energy’;

- Class 36: ‘Insurance; financial affairs; monetary affairs; real estate management; financial management of wind power plants’;

- Class 37: ‘Construction of wind power plants and other buildings; repair of wind power plants and other buildings; installation services regarding wind power plants and other buildings’;

- Class 39: ‘Electricity distribution of wind power energy’;

- Class 40: ‘Energy production of wind power energy; leasing of wind power energy generating facilities’;

- Class 42: ‘Scientific and technological services; industrial analysis and research services; technical planning and project management relating to the construction and use of wind power; technological engineering analysis in the field of wind power exploitation’;

- Class 45: ‘Legal services’.

4 The trade mark application was published in Community Trade Marks Bulletin No 8/2012 of 12 January 2012.

5 On 29 February 2012, the applicant, Edison SpA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the earlier figurative mark, reproduced below, which was filed on 31 October 2003, registered as an EU trade mark on 14 July 2005 under the number 3490851 and covers, inter alia, the goods ‘fuel, gas’ in Class 4, the services ‘distribution of electrical energy and fuel’ in Class 39 and the services ‘generation of electrical energy’ in Class 40:

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

8 On 1 October 2013, the Opposition Division rejected the opposition.

9 On 28 November 2013 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 24 February 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision in part, dismissed the appeal as to the remainder and ordered each party to bear the costs which that party had itself incurred in the course of the opposition and appeal proceedings. According to the Board of Appeal:

- the relevant public consists of the general public as well as of professionals with specific professional experience and knowledge. Its level of attention is high, in the case of the former group, on account of the fact that the goods and services in question are not acquired on an everyday basis and, in the case of the latter group, on account of its professional responsibilities;

- the signs at issue are, ‘at most, similar overall to a low extent’;

- the services ‘electricity distribution of wind power energy’ in Class 39 covered by the mark applied for and the services ‘distribution of electrical energy and fuel’ in Class 39 covered by the earlier mark are identical. Likewise, the services ‘energy production of wind power energy’ in Class 40 covered by the mark applied for and the services ‘generation of electrical energy’ in Class 40 covered by the earlier mark are identical;

- the other goods and services at issue are, in part, similar, in part, similar to a low degree and, in part, dissimilar;

- the earlier mark has a normal degree of inherent distinctiveness.

11 The Board of Appeal deduced from those findings that there was a likelihood of confusion between the marks at issue in respect of the services referred to in the third indent of paragraph 10 above and that there was no likelihood of confusion in respect of the other goods and services.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision in part, in so far as it rejected the opposition in respect of the goods and services in Classes 4, 11, 37, 40 and 42 covered by the mark applied for;

- order EUIPO to pay the costs.

13 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

14 In support of the action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and consisting of three parts.

15 In the context of the first part of the plea, the applicant submits that the Board of Appeal made errors of assessment at the stage of the comparison of the signs and the comparison of the goods and services concerned. In the context of the second part, the applicant alleges, in essence, that the Board of Appeal erred in finding that it had failed to provide suitable evidence to prove that the earlier mark had acquired enhanced distinctiveness through use. Lastly, in the context of the third part, the applicant alleges that the Board of Appeal made an error of assessment inasmuch as it found that there was no likelihood of confusion between the marks at issue.

The first part

16 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 must not 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.

17 According to settled case-law, the risk that the public may 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see 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).

18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM - easyGroup IP Licensing (easyHotel), T-316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

The relevant public

19 The Board of Appeal found, in paragraphs 13 to 16 of the contested decision, that, since the earlier mark was an EU trade mark, the perception of consumers within the European Union was relevant. As regards the level of attention, it made a distinction between the goods and services concerned and took the view that the goods and services in Classes 4, 36 and 45 were aimed at the general public as well as at professionals. According to the Board of Appeal, those consumers are regarded as having, on average, a high level of attention, due to the fact that the goods and services in question are not acquired on an everyday basis. By contrast, it found that the goods and services in Classes 11, 37, 39, 40 and 42 are mainly specialised goods and services aimed at business customers with specific professional experience and knowledge. According to the Board of Appeal, those consumers are regarded as having a high level of attention due to their professional responsibilities. The applicant does not dispute those findings. They must, in any event, be accepted, since they are correct.

The comparison of the signs

20 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual...