Judgments nº T-59/08 of The General Court, December 07, 2010

• Resolution Date: December 07, 2010
• Issuing Organization: The General Court
• Decision Number: T-59/08

In Case T‑59/08,

Nute Partecipazioni SpA, formerly Gruppo La Perla SpA,

La Perla Srl,

established in Bologna (Italy), represented by R. Morresi and A. Dal Ferro, lawyers,

applicants,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by L. Rampini, and subsequently by O. Montalto, acting as Agents,

defendant,

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

Worldgem Brands Srl, formerly Worldgem Brands – Gestão e Investimentos L da , established in Creazzo (Italy), represented by V. Bilardo, M. Mazzitelli and C. Bacchini, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 November 2007 (Case R 537/2004‑2) concerning invalidity proceedings between Nute Partecipazioni SpA and Worldgem Brands Srl,

THE GENERAL COURT (First Chamber),

composed of I. Wiszniewska-Białecka, President, F. Dehousse and H. Kanninen (Rapporteur), Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Registry of the Court on 7 February 2008,

having regard to the response of OHIM lodged at the Registry of the Court on 21 May 2008,

having regard to the response of the intervener lodged at the Registry of the Court on 9 May 2008,

having regard to the reply lodged at the Registry of the Court on 1 August 2008,

having regard to the rejoinder of the intervener lodged at the Registry of the Court on 20 October 2008,

having regard to the change in the composition of the First Chamber of the Court,

further to the hearing on 11 May 2010,

gives the following

Judgment

Background to the dispute

1 On 30 December 1997, the intervener, Worldgem Brands Srl, formerly Worldgem Brands – Gestão e Investimentos L da , formerly Cielo Brands – Gestão e Investimentos L da , filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 mark for which registration was sought is the word sign NIMEI LA PERLA MODERN CLASSIC.

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 corresponded, at the time of application, to the following description: ‘Jewellery, gold articles, watches; precious metals; pearls; precious stones’.

4 The mark applied for was registered on 21 July 1999.

5 On 15 April 2002, the first applicant, Nute Partecipazioni SpA, formerly Gruppo La Perla SpA, applied for a declaration that that registration be declared invalid pursuant, firstly, to Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009) on the ground that the registration was contrary to the absolute grounds for refusal laid down in Article 7(1)(a) and (b) of that regulation (now Article 7(1)(a) and (b) of Regulation No 207/2009) and, secondly, to Article 52(1)(a) of that regulation (now Article 53(1)(a) of Regulation No 207/2009) on the ground that the registration was contrary to the relative grounds for refusal set out in Article 8(1)(b) and Article 8(5) of that regulation (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).

6 The earlier marks relied on in support of the application for a declaration of invalidity, which are protected in Italy, are, inter alia:

– the figurative mark la PERLA, registered under number 769 526, with effect from 20 March 1996, for the following goods in Class 25: ‘Swimwear, sportswear and clothing in general’, reproduced below;

– the figurative mark la PERLA, registered under number 804 992, with effect from 8 October 1997, inter alia for the following goods in Class 14: ‘Jewellery products and watches’, reproduced below.

7 In support of its application for a declaration of invalidity the first applicant adduced documents before the Cancellation Division of OHIM consisting, inter alia, of lists of trade mark registrations, press articles, lists of shops bearing the ‘La Perla’ sign, as well as statistics relating to its turnover and its advertising costs in order to establish the reputation of its trade marks and the damage to them.

8 On 4 May 2004, the Cancellation Division declared the Community trade mark NIMEI LA PERLA MODERN CLASSIC invalid on the ground that the use of this trade mark could allow its proprietor to take unfair advantage of the reputation of the figurative trade mark la PERLA, covered by registration number 769 526, within the meaning of Article 8(5) of Regulation No 40/94.

9 On 1 July 2008, the intervener filed an appeal with OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Cancellation Division.

10 By decision of 25 January 2005 (‘the first decision’), the First Board of Appeal of OHIM upheld the appeal of the intervener and annulled the decision of the Cancellation Division. It held that the Community trade mark NIMEI LA PERLA MODERN CLASSIC was not sufficiently similar to the la PERLA figurative mark covered registration number 769 526, nor to the other trade marks set out in the application for a declaration of invalidity, to be able to conclude that there was a likelihood of confusion, as set out in Article 8(1)(b) of Regulation No 40/94, or a link between these trade marks for the purposes of applying Article 8(5) of Regulation No 40/94.

11 By application lodged at the Registry of the Court on 1 April 2005, the first applicant brought an action, registered as Case T‑137/05, seeking annulment of the first decision and invoking: (i) infringement of Article 8(5) of Regulation No 40/94; (ii) infringement of Article 8(1)(b) of that regulation; and (iii) infringement of the obligation to state reasons. OHIM endorsed the form of order sought by the first applicant in so far as it sought annulment of the first decision, on the ground of misapplication of Article 8(5) and of Article 52(1)(a) of Regulation No 40/94.

12 By judgment dated 16 May 2007 in Case T-137/05 La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), not published in the European Court Reports (‘the judgment of the Court’), the Court upheld the first applicant’s action finding, firstly, that the repute of the earlier la PERLA trade mark covered by registration number 769 526 was established and, secondly, that the Board of Appeal erred by finding that the earlier la PERLA trade mark, covered by registration number 769 526, and the trade mark NIMEI LA PERLA MODERN CLASSIC were not sufficiently similar for a connection of such a kind as is required for the application of Article 8(5) of Regulation No 40/94. Hence, the Court annulled the first decision, without altering the assessment of OHIM regarding the condition that there must be a likelihood that the use without due cause of the trade mark NIMEI LA PERLA MODERN CLASSIC would allow its proprietor to take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the la PERLA mark, covered by registration number 769 526, it being for OHIM to carry out that assessment (paragraphs 26, 33, 52 and 53 of the judgment of the Court).

13 On 18 September 2007, the Presidium of the Boards of Appeal of OHIM reallocated the case to the Second Board of Appeal.

14 By decision of 19 November 2007 (‘the contested decision’) the Second Board of Appeal of OHIM annulled the decision of the Cancellation Division. It found, firstly, that it had not been proven that the trade mark NIMEI LA PERLA MODERN CLASSIC could allow unfair advantage to be taken of, or be detrimental to, the distinctive character or the reputation of the earlier la PERLA mark covered by registration number 769 526, and that therefore Article 8(5) of Regulation No 40/94 could not be applied. Then, exercising the powers of the Cancellation Division, it dismissed the application for a declaration of invalidity based on absolute grounds.

15 Finally, still exercising the powers of the Cancellation Division, in order to examine the application of Article 8(1)(b) of Regulation No 40//94, the Board of Appeal found that the ‘jewellery products and watches’ coming within Class 14 and covered by the earlier la PERLA trade mark under registration number 804 992, and the ‘Jewellery, gold articles and watches’ covered by the Community trade mark were identical or had a high degree of similarity, and there was a high degree of similarity in relation to the ‘precious metals; pearls; precious stones’ covered by the Community trade mark. The Board of Appeal found that there was a likelihood of confusion on the part of the Italian public regarding all the goods covered by the Community trade mark NIMEI LA PERLA MODERN CLASSIC, with the exception of...