Judgments nº T-99/06 of Court of First Instance of the European Communities, September 23, 2009

• Resolution Date: September 23, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-99/06

In Case T-99/06,

Phildar SA, established in Roubaix (France), represented by E. Baud, lawyer,

applicant,

v

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

defendant,

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

Comercial Jacinto Parera, SA, established in Barcelona (Spain),

ACTION against the decision of the Second Board of Appeal of OHIM of 16 January 2006 (Case R 245/2004-2), relating to opposition proceedings between Phildar SA and Comercial Jacinto Parera, SA,

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

composed of N.J. Forwood, President, D. -váby (Rapporteur) and E. Moavero Milanesi, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 30 March 2006,

having regard to the response lodged at the Registry of the Court on 13 June 2006,

further to the hearing on 15 January 2009,

gives the following

Judgment

Background to the dispute

1 On 26 May 1998 Comercial Jacinto Parera, SA, filed an application for the Community word trade mark FILDOR with 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The goods in respect of which registration was sought fall within Classes 22 to 26 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:

- -Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags; padding and stuffing materials (horsehair, kapok, feathers, seaweed); natural or synthetic fibrous textile materials- (Class 22);

- -Yarns and threads of all kinds presented in skeins, reels, balls and other forms- (Class 23);

- -Textiles and knitted fabrics, bed covers and table cloths, soft furnishings- (Class 24);

- -Clothing and footwear- (Class 25);

- -Lace and embroidery, ribbons and braid, buttons and snap fasteners, hooks and eyes, pins and needles, artificial flowers- (Class 26).

3 The Community trade mark application was published in the Community Trade Marks Bulletin of 19 March 1999.

4 On 15 June 1999, the applicant, Phildar SA, formerly Les Fils de Louis Mulliez SA, filed a notice of opposition to that application for registration under Article 42(1) of Regulation No 40/94 (now Article 41(1) of Regulation No 207/2009), on the basis of Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009) (opposition proceedings B 165 235). The opposition was based on the following earlier rights of the applicant:

- French word trade mark No 744 927 FILDOR registered on 22 April 1968;

- International semi-figurative trade mark No 217 674, reproduced below, registered on 25 February 1979 with effect in Germany, Italy, Austria, Portugal and the Benelux countries:

- International word trade mark No 311 325 PHILDAR registered on 1 April 1986 with effect in Germany, Spain, Italy, Austria, Portugal and the Benelux countries;

- French colour semi-figurative trade mark No 97 660 080, reproduced below, registered on 22 January 1997:

5 The earlier marks were registered for the goods in, respectively, Classes:

- 22 to 26 corresponding to the following description:

- -Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags; padding and stuffing materials (horsehair, kapok, feathers, seaweed)- (Class 22);

- -Knitting yarns and threads of all kinds and all kinds of yarns made with natural, artificial or synthetic fibres, cotton, wool, angora- (Class 23);

- -Textiles, knitted fabrics, bed covers and table cloths, soft furnishings- (Class 24);

- -Clothing in general, stockings, tights, socks, clothing woven with stitches and knitted, underclothing, corsets, ties, braces, gloves, boots, shoes and slippers- (Class 25);

- -Lace and embroidery, ribbons and braid; buttons and snap fasteners, hooks and eyes, pins and needles; artificial flowers- (Class 26).

- 22 to 26 and corresponding inter alia to the following description: -Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags; padding and stuffing materials (horsehair, kapok, feathers, seaweed); raw fibrous textile materials. Knitting wool pure or mixed; yarn for haberdashery. Fabrics, bed covers and table cloths, handkerchiefs, household lingerie, tapestry; stockings, socks, underclothing, lingerie for women in nylon and rayon; ready-made clothing, underclothing and tracksuits; boots, shoes and slippers; lace and embroidery, ribbons and braid; buttons and snap fasteners, hooks and eyes, pins and needles; artificial flowers.-

- 23 to 26 and corresponding inter alia to the following description: -Woollen or animal hair thread and yarn, silk thread and yarn, hemp, linen, jute, rayon, fibres thread and yarn, cotton thread and yarn, haberdashery. Woollen or animal hair fabric, silk fabric, hemp, linen, jute, rayon, fibres fabric, cotton fabric, household linen. Confectioned clothing of all kinds, underclothing, hosiery, gloves, corsets. Embroidery, lace trimmings, braids, buttons, lace trimming ribbons, haberdashery, needles and pins.-

- 22 to 26 and corresponding inter alia to the following description:

- -Ropes, strings, nets, tents, awnings, packing sacks and bags (envelopes and pouches) of textile packaging, sacks and bags for the transport and storage of materials in bulk, padding and stuffing materials (except of rubber or plastic), raw fibrous textile materials, textile fibres- (Class 22);

- -Yarns and threads for textile use, knitting wool (pure or mixed), linen thread and yarn or all kinds of yarns made with natural, artificial or synthetic fibres, cotton (yarns of all kinds), wool, angora- (Class 23);

- -Fabrics, bed and table covers, textile goods not included in other classes: sheets, pillowcases, bed covers, table cloths, serviettes, handkerchiefs, household linen, dishcloths, not woven fabrics, felt, woven fabrics, knitted fabrics, fabrics for manufacture, upholstery fabrics, tapestry, curtains- (Class 24);

- -Ready-made clothing, knitwear and hosiery, underclothing, underwear, pyjamas, dressing gowns, skirts, frocks, trousers, jackets, coats, shirts of all kinds, neckties, scarves, gloves, belts, hats, waterproofed clothing, clothing for sports, footwear, socks, stockings, tights, boots, shoes and slippers; clothing of all kinds for men, women and kids- (Class 25);

- -Lace and embroidery, ribbons and braid, hooks and eyes, pins and needles, artificial flowers- (Class 26).

6 The applicant was invited to prove the use of its earlier rights. It supplied relevant documents, including product catalogues and samples.

7 By decision of 21 February 2001, the Opposition Division found, first, that there was no evidence of use of the applicant-s two international registrations. As regards the earlier French word trade mark FILDOR, the Opposition Division found that its use was limited to the following goods: -clothing, in particular, clothing made of tricot, of natural (wool, cotton) or synthetic fibres; buttons; knitting yarns and threads of all kinds and all kinds of yarns made with natural artificial or synthetic fibres, cotton, wool, angora-. Since it considered that the trade mark applied for and the earlier French trade mark FILDOR are identical, it allowed the opposition and refused the Community trade mark application in respect of the following goods: -yarns and threads of all kinds presented in skeins, reels, balls and other forms (Class 23); knitted fabrics (Class 24); clothing, footwear (Class 25); buttons and snap fasteners, hooks and eyes (Class 26)-. Secondly, with regard to the other goods covered by the trade mark application, the Opposition Division rejected the opposition and allowed the application because those goods were not similar to those protected by the earlier French word trade mark FILDOR. Lastly, the Opposition Division deemed it -useless- to examine the opposition based on the French registration of the semi-figurative sign PHILDAR, taking the view that the goods for which use of that trade mark had been proved were identical to those of the earlier French registration FILDOR.

8 Both parties appealed against that decision of the Opposition Division. It is apparent from the applicant-s appeal that it did not dispute the Opposition Division-s finding concerning the non-use of its international trade marks.

9 By decision of 9 October 2002 the Fourth Board of Appeal of OHIM annulled the decision of the Opposition Division on the grounds, first, that sufficient use of the earlier French trade mark FILDOR had not been proved and, secondly, that the Opposition Division had been wrong not to take account of the registration of the French semi-figurative mark PHILDAR for all the goods which it protected. According to the Board of Appeal the latter trade mark was not subject to the use requirement at the time of publication of the application for registration of the Community trade mark FILDOR. It therefore remitted the case to the Opposition Division for a comparison between the application for the Community trade mark FILDOR and the earlier French semi-figurative trade mark PHILDAR. It is common ground that the applicant has not challenged that decision of the Board of Appeal before the Court of First Instance.

10 By decision of 20 February 2004, the Opposition Division, first, repeated the findings made in its previous decision in respect of the use of the applicant-s earlier trade marks. Secondly, it declared that, -for reasons of procedural economy-, it...