Judgments nº T-495/15 of The General Court, March 16, 2017

• Resolution Date: March 16, 2017
• Issuing Organization: The General Court
• Decision Number: T-495/15

(EU trade mark - Opposition proceedings - Application for the EU figurative mark MOUNTAIN CITRUS SPAIN - Earlier EU figurative mark monteCitrus - Relative ground for refusal - No likelihood of confusion - Identity of the goods - No similarity between the signs - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-495/15,

Sociedad agraria de transformación No 9982 Montecitrus, established in Pulpí (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Schifko and K. Sidat Humphreys, acting as Agents,

defendant,

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

Spanish Oranges, SL, established in Castellón (Spain),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 June 2015 (Case R 871/2014-4), relating to opposition proceedings between Sociedad agraria de transformación No 9982 Montecitrus and Spanish Oranges,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, E. Bieliūnas and A. Kornezov (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 27 August 2015,

having regard to the response lodged at the Court Registry on 3 December 2015,

having regard to the written question put to Spanish Oranges by the Court and the failure to reply to that question within the prescribed period,

having regard to the order of 18 March 2016 refusing to grant Spanish Oranges the status of intervener,

having regard to the change in the composition of the Chambers of the Court,

having regard to the reassignment of the case to the Seventh Chamber and to a new Judge-Rapporteur,

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 October 2012, Spanish Oranges, 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 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 29, 31 and 39 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:

- ‘preserved, frozen, dried and cooked fruits and vegetables’ in Class 29;

- ‘oranges’ in Class 31;

- ‘transport’ in Class 39.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 229/2012 of 30 November 2012.

5 On 28 February 2013, the applicant, Sociedad agraria de transformación No 9982 Montecitrus, 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 EU figurative mark reproduced below:

7 The earlier mark, which was registered on 5 June 2010 under the number 5460175, covers goods in Classes 29, 31 and 32 corresponding, for each of those classes, to the following description:

- ‘jams, compotes, jellies; preserved, dried and cooked fruits and vegetables; eggs; edible oils and fats; meat, fish, poultry and game; meat extracts’ in Class 29;

- ‘fresh fruits and vegetables; agricultural, horticultural and forestry products and grains not included in other classes; live animals, natural plants and flowers; foodstuffs for animals; malt’ in Class 31;

- ‘fruit drinks and fruit juices; syrups and other preparations for making beverages; beers; mineral and aerated waters and other non-alcoholic drinks’ in Class 32.

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

9 On 30 January 2014, the Opposition Division rejected the opposition and allowed the mark applied for to be registered in its entirety.

10 On 28 March 2014, 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.

11 By decision of 26 June 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. As regards, first of all, the comparison of the goods and services, it adopted the Opposition Division’s analysis that, first, the goods covered by the mark applied for and those covered by the earlier mark were identical and, secondly, the services covered by that application, namely the services of transport, and the goods covered by the earlier mark were not similar, stating that the parties had not put forward any arguments or reasons which would invalidate the analysis in question. Next, as regards the comparison of the signs at issue, it pointed out the low degree of visual similarity and the lower than average degree of phonetic similarity between them. It also noted, first, that it could not be excluded that, as regards the average Spanish consumer’s perception, a similar idea was conveyed by the signs at issue, secondly, that those signs coincided as regards the element ‘citrus’ for the part of the relevant public that exclusively understood the idea behind that term and, thirdly, that there was no conceptual similarity for the part of that public that did not identify any concept in the signs in question. The Board of Appeal stated, regarding the first case, that the idea of ‘fruits obtained from citrus trees in an earth surface which is not flat but elevated’ was descriptive of the type of goods at issue and of a characteristic of those goods, namely the geographical location in which they are obtained and, regarding the second case, that the element ‘citrus’ simply identified the kind of goods at issue. Lastly, in the context of the global assessment of the likelihood of confusion, it stated that having regard to the principle of the interdependence between the factors taken into account, it had to be found that the identity of the goods covered by the mark applied for and the goods covered by the earlier mark was, in the present case, counteracted by the low degree of visual similarity of the signs. The Board of Appeal took the view that, with regard to the goods at issue, the outcome of the analysis of the visual similarity between those signs would be more important than the outcome of the analysis of the phonetic and conceptual similarity. It thus found that, even with regard to the goods covered by the mark applied for, which had been found to be identical to those covered by the earlier mark, and in the absence of any increased distinctive character of that earlier mark as a result of the use which had been made of it, there was no likelihood of confusion. With regard to the services covered by the mark applied for, it stated that, if only on account of the lack of similarity between those services and the goods covered by the earlier mark, such a likelihood of confusion was, by definition, excluded.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- refuse, therefore, registration of the mark applied for in respect of all the goods in Classes 29 and 31 covered by that mark;

- order Spanish Oranges to pay the costs.

13 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

The admissibility of the applicant’s second head of claim

14 By the second head of claim, the applicant requests that the Court, as has been stated in paragraph 12 above, refuse registration of the mark applied for in respect of all the goods in Classes 29 and 31 covered by that mark. By such a head of claim the applicant is thus requesting that the Court issue a direction to that effect to EUIPO.

15 According to settled case-law, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the EU judicature. Accordingly, it is not for the Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the judgments of the Court (see judgment of 11 July 2007, El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, EU:T:2007:219, paragraph 20 and the case-law cited). Therefore, the applicant’s head of claim requesting the Court to refuse registration of the mark applied for in respect of all the goods in Classes 29 and 31 covered by that mark is inadmissible.

The subject matter of the claim for annulment

16 EUIPO maintains that the applicant’s claim for annulment seeks the annulment of the contested decision only in so far as the Board of Appeal ruled out any likelihood of confusion between the mark applied for and the earlier mark as regards the goods concerned and not the services of transport in Class 39, which are also covered by the mark applied for.

17 It must be pointed out that the applicant submits, in support of its claim for annulment and of the single plea in law, only factual and legal arguments relating to the goods covered by the mark applied for and by the earlier mark. It therefore follows, in the light of the whole of the application that the applicant does not, in actual fact, intend to request the annulment of the contested decision in so far as the Board of Appeal ruled out any likelihood of confusion between the mark...