Judgments nº T-147/03 of Court of First Instance of the European Communities, January 12, 2006

• Resolution Date: January 12, 2006
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-147/03

(Community trade mark − Figurative mark containing the verbal element ‘quantum’ – Opposition of the proprietor of the national figurative mark Quantième – Relative ground of refusal – Likelihood of confusion – Article 8(1)(b), Article 15(2) and Article 43(3) of Regulation (EC) No 40/94) In Case T-147/03,

Devinlec Développement Innovation Leclerc SA, established in Toulouse (France), represented by J.-P. Simon, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Novais Gonçalves and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

T.I.M.E. ART Uluslararasi Saat Ticareti ve diş Ticaret AŞ, established in Istanbul (Turkey), represented by F. Jacobacci, lawyer,

ACTION brought against the decision of the Third Board of Appeal of OHIM of 30 January 2003 (Case R 109/2002-3) relating to opposition proceedings between Devinlec Développement Innovation Leclerc SA and T.I.M.E. Art Uluslararasi Saat Ticareti ve diş Ticaret AŞ,

THE COURT OF FIRST INSTANCEOF THE EUROPEAN COMMUNITIES (Fourth Chamber),

composed of H. Legal, President, P. Mengozzi and I. Wiszniewska-Białecka, Judges,

Registrar: B. Pastor, Deputy Registrar,

having regard to the application lodged at the Registry of the Court of First Instance on 30 April 2003,

having regard to the response lodged at the Registry of the Court of First Instance on 24 October 2003,

having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 28 October 2003,

further to the hearing on 30 June 2005,

gives the following

Judgment

Background

1 On 8 September 1997 T.I.M.E. ART Uluslararasi Saat Ticareti ve diş Ticaret AŞ (‘the intervener’) filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2 Registration was sought for the following figurative sign:

3 The goods in respect of which registration was sought are in Class 14 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: ‘watches, clocks, movements and parts thereof, watch/clock glasses, watch/clock casings, watch straps, watch chains/bracelets, watch bands, cases for watches and for clocks’.

4 On 17 August 1998, the application was published in the Community Trade Marks Bulletin No 62/98.

5 On 9 November 1998, Devinlec Développement Innovation Leclerc SA (‘the applicant’) filed a notice of opposition against registration of the mark sought, relying on the earlier figurative mark registered in France on 11 December 1987 under No 1 555 274, which is reproduced below:

6 The goods in respect of which the earlier mark is registered correspond to the following description for the purposes of the Nice Agreement:

– Class 14: ‘clocks and watchmaking goods; jewellery’;

– Class 18: ‘leather goods’.

7 The opposition, based on the relative ground of refusal in Article 8(1)(b) of Regulation No 40/94, was directed against all the goods covered by the application for registration.

8 On 10 March 1999, the intervener requested that the applicant furnish proof of use of the earlier mark, pursuant to Article 43(2) and (3) of Regulation No 40/94.

9 In order to demonstrate genuine use of the earlier mark, the applicant submitted various items and documents, inter alia watches, invoices, promotional material, press articles and a sworn statement by its director.

10 It was apparent from that evidence that the earlier mark had been used in France in respect of ‘watches and watch straps’ under the figurative sign reproduced below:

11 By decision of 30 November 2001, the Opposition Division ruled on the opposition. First, it took the view that the applicant had furnished proof of use of the earlier mark, and that such use under the figurative sign reproduced in paragraph 10 above had not altered the distinctive character of the earlier mark. Secondly, it upheld the opposition on the ground that the goods covered by the marks were in part identical and in part similar and that the signs presented a sufficient degree of visual, phonetic and conceptual similarity, and therefore there was a likelihood of confusion on the part of the relevant public.

12 On 29 January 2002, the intervener filed an appeal with OHIM against the decision of the Opposition Division.

13 By decision of 30 January 2003 (‘the contested decision’), the Third Board of Appeal annulled the decision of the Opposition Division and consequently rejected the opposition. In substance, the Board of Appeal considered that, notwithstanding the identity and similarity of the goods covered by the marks, it was necessary to take account of the circumstances in which the goods covered by the earlier mark were marketed and the fact that watches and watch straps bearing that mark are sold to the end consumer in E. Leclerc shopping centres only. In those circumstances, the Board of Appeal took the view that the visual and phonetic similarities between the marks and their possible common allusion to the notion of quantity would not lead the average consumer, were he to see the mark applied for on ‘watches, clocks, watch straps, watch chains/bracelets, watch bands, cases for watches and for clocks’ in outlets other than E. Leclerc stores, to consider that the goods covered by the marks originated from the same undertaking or from connected undertakings (paragraphs 39 and 40 of the contested decision).

Forms of order sought

14 The applicant claims that the Court should:

– annul the contested decision;

– reject the application for registration of the mark applied for;

– order OHIM to pay the costs;

– order the intervener to pay the costs of the administrative proceedings before OHIM.

15 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

16 The intervener claims that the Court should:

– dismiss the action;

– annul the contested decision to the extent that it is adversely affected by it.

Law

17 In support of its first head of claim, the applicant puts forward two pleas in law. The first plea alleges infringement of Rule 50 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1). The second plea alleges infringement of Article 8(1)(b) of Regulation No 40/94 and of the ‘general principles of trade mark law’.

18 The intervener puts forward an independent plea for annulment of the contested decision, alleging infringement of Articles 15(2) and 43(3) of Regulation No 40/94.

19 The Court will first examine the intervener’s independent plea, then the second and first pleas put forward by the applicant.

The intervener’s independent plea, alleging infringement of Articles 15(2) and 43(3) of Regulation No 40/94

Arguments of the parties

20 The intervener requests the Court of First Instance to find that the Board of Appeal erred in finding that the earlier mark, as it was used by the applicant, did not alter the distinctive character of the sign as it had been previously registered in France. Consequently, the intervener also seeks a declaration from the Court that the proof of genuine use of the earlier mark submitted by the applicant to OHIM during the administrative proceedings was insufficient and that the Board of Appeal infringed Article 43(3) of Regulation No 40/94.

21 At the hearing, the applicant and OHIM submitted that the contested decision should be confirmed on that point.

Findings of the Court

22 Article 15 of Regulation No 40/94, entitled ‘Use of Community trade marks’, states:

‘1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

2. The following shall also constitute use within the meaning of paragraph 1:

   (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

   …’

   23 Article 43 of Regulation No 40/94, entitled ‘Examination of opposition’, provides:

   ‘2. If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.

   …’

   24 In this case, it should be noted that...