Judgments nº T-181/05 of Court of First Instance of the European Communities, April 16, 2008

• Resolution Date: April 16, 2008
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-181/05

In Case T-181/05,

Citigroup, Inc., formerly Citicorp, established in New York, New York (United States),

Citibank, NA, established in New York,

represented initially by V. von Bomhard, A.W. Renck and A. Pohlmann, lawyers, and subsequently by V. von Bomhard, A.W. Renck, and H. O-Neill, Solicitor,

applicants,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. GarcÌa Murillo and D. Botis, 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

Citi, SL, established in Madrid (Spain), represented by M. Peris Riera, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 1 March 2005 (Case R 173/2004-1) relating to opposition proceedings between, firstly, Citicorp and Citi SL, and secondly, Citibank NA and Citi SL,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of J.†D. Cooke, President, I. Labucka and M. Prek, Judges,

Registrar: K. Andov·, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 10 May 2005,

having regard to the response of OHIM lodged at the Registry of the Court on 6 April 2006,

having regard to the response of the intervener lodged at the Registry of the Court on 6 April 2006,

having regard to the substitution of Citigroup Inc. for Citicorp,

further to the hearing on 11 July 2007,

having regard to the reopening of the oral procedure on 21 November 2007,

gives the following

Judgment

†Background to the dispute

1 ††††††††On 20 December 1999, Citi SL, a company governed by Spanish law, filed an application for 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 ††††††††The trade mark in respect of which registration was sought is the figurative sign reproduced below:

3 ††††††††The services in respect of which registration of the trade mark was applied for are in Class 36 of the Nice Agreement of 15 June 1957 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: -customs agencies, property valuers, real estate agents, evaluation and administration of house contents-.

4 ††††††††On 11 December 2000 that application was published in the Community Trade Marks Bulletin No 98/2000.

5 ††††††††On 12 March 2001, Citicorp, which subsequently merged with Citigroup Inc. on 1 August 2005 and has been subsumed by the latter, filed an opposition against registration of the trade mark applied for, relying on the following earlier trade marks and trade mark application:

-††††††††German word mark CITI No†39847157 registered on 17 March 2000 in respect of -real estate services- and -financial services- in Class 36;

-††††††††application for a figurative Community trade mark No 1084532 filed on 23 February 1999 for -real estate services- and -financial services- in Class 36, represented as follows:

-††††††††the Community word mark CITICORP No†65367 registered on 9 December 1998 for -real estate services- in Class 36.

6 ††††††††On the same date, Citibank NA filed an opposition against registration of the trade mark applied for, relying on the following 11 Community word marks, all of which were registered for -financial services- and -real estate services- in Class 36: CITIBANK, CITIBANKING, CITICARD, CITIGOLD, CITIPHONE, CITIBASICS, CITIBUSINESS, CITIONE, CITIDIRECT, CITINETTING and THE CITI NEVER SLEEPS.

7 ††††††††By letter of 3 August 2001 OHIM notified the parties that the two sets of opposition proceedings had been joined and were to be dealt with together.

8 ††††††††Be decision of 24 February 2004, the Opposition Division upheld the opposition filed by the applicants under Article 8(5) of Regulation No 40/94, rejected the application for a Community trade mark and ordered the intervener to bear the costs.

9 ††††††††On 2 March 2004, the intervener lodged an appeal at OHIM against the decision of the Opposition Division.

10 ††††††By decision of 1 March 2005 (-the contested decision-) the First Board of Appeal of OHIM annulled the decision of the Opposition Division. It accepted the opposition in respect of the services of property valuers and real estate agents, and those of evaluation and administration of house contents, but rejected it in respect of the services of customs agencies.

11 ††††††In essence, the Board of Appeal found that Article 8(5) of Regulation No 40/94 was not applicable in this case. In contrast to the Opposition Division, the Board of Appeal decided that none of the evidence produced substantiated the claim that the family of trade marks, of which the element -citi- is the common denominator, enjoyed a reputation, or that the public perceived the earlier mark CITIBANK as being part of a family of trade marks belonging to the applicants. According to the Board of Appeal, the applicants had only one trade mark with a reputation, that being the earlier trade mark CITIBANK, for financial services only. However, also according to the Board of Appeal, that trade mark and the trade mark applied for (CITI) were not similar within the meaning of Article 8(5) of Regulation No 40/94. The Board of Appeal accordingly took the view that it was not necessary to further examine the case under that latter provision.

12 ††††††Nevertheless, in the contested decision the Board of Appeal upheld the refusal of the application in respect of real estate services pursuant to Article 8(1)(b) of Regulation No 40/94, on the ground that there was a likelihood of confusion between the trade mark applied for and the earlier German trade mark -CITI- covering financial and estate agency services. As regards customs agency services, the Board of Appeal allowed the application for registration, holding that these were not similar to the services covered by the earlier trade mark CITI.

†Forms of order sought

13 ††††††The applicants claim that the Court should:

-††††††††annul the contested decision;

-††††††††order OHIM and the intervener to pay the costs.

14 ††††††OHIM contends that the Court should:

-††††††††dismiss the first and second of the applicants- pleas in law;

-††††††††as regards the third plea in law, determine whether there are similarities between the signs at issue:

-††††††††if the Court should hold that the signs at issue are similar, either continue with an assessment of the other requirements of Article 8(5) of Regulation No 40/94, and in those circumstances annul the contested decision and order each of the parties to bear its own costs, or, if it cannot carry out such an assessment, annul the contested decision, refer the matter back to the Board of Appeal and order each party to bear its own costs;

-††††††††if the Court should decide that the findings of the contested decision are correct with regard to Article 8(5) of Regulation No 40/94, dismiss the application and order the applicants to pay the costs.

15 ††††††At the hearing, OHIM contended that, should the applicants be successful, the Court should order the parties to bear their own costs.

16 ††††††The intervener contends that the Court should:

-††††††††dismiss the application;

-††††††††order the applicants to pay the costs.

†Law

†Admissibility of a number of the forms of order sought by OHIM

17 ††††††The Board of Appeal held that, contrary to what the applicants claim, there is no similarity between the trade mark CITIBANK and the trade mark applied for (CITI). However, in its response, OHIM concurs with the applicants- arguments, presented within the second strand of the third plea in law, that the Board of Appeal incorrectly assessed the similarity of the signs at issue within the meaning of Article 8(5) of Regulation No 40/94.

18 ††††††In that regard, the Court has held, in proceedings relating to a Board of Appeal ruling on opposition proceedings, that, while OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal, conversely it cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed (Case T-107/02 GE Betz v OHIM - Atofina Chemicals (BIOMATE) [2004] ECR II-1845, paragraph 34; Case T-379/03 Peek & Cloppenburg v OHIM (Cloppenburg) [2005] ECR II-4633, paragraph 22; and Case T-53/05 Calavo Growers v OHIM - Calvo Sanz (Calvo) [2007] ECR II-37, paragraph 26).

19 ††††††There is therefore nothing to prevent OHIM from endorsing a head of claim of the applicant-s or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate to assist the Court (BIOMATE, cited in paragraph 18 above, paragraph 36, and Cloppenburg, cited in paragraph 18 above, paragraph 22).

†Substance

20 ††††††The applicants put forward three pleas in law in support of the action. The first alleges infringement of the second sentence of Article 73 of Regulation No 40/94; the second alleges infringement of the first sentence of Article 73 and of Article 74(1) of Regulation No 40/94, while the third alleges infringement of Article 8(5) of Regulation No 40/94.

21 ††††††The Court considers that it should, first, examine the third plea in law.

22 ††††††The third plea in law, which alleges an infringement of Article 8(5) of Regulation No 40/94, is made up of three...