Judgments nº T-424/10 of The General Court, February 07, 2012

• Resolution Date: February 07, 2012
• Issuing Organization: The General Court
• Decision Number: T-424/10

(Community trade mark – Invalidity proceedings – Community figurative mark representing elephants in a rectangle – Earlier international and national figurative marks representing an elephant and earlier national word mark elefanten – Relative ground of refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 – Distinctive character of the earlier marks)

In Case T‑424/10,

Dosenbach-Ochsner AG Schuhe und Sport, established in Dietikon (Switzerland), represented by O. Rauscher, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Mannucci, acting as Agent,

defendant,

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

Sisma SpA, established in Mantova (Italy), represented by F. Caricato, lawyer,

intervener,

ACTION against the decision of the Fourth Board of Appeal of OHIM of 15 July 2010 (Case R 1638/2008-4) concerning invalidity proceedings between Dosenbach-Ochsner AG Schuhe und Sport and Sisma SpA,

THE GENERAL COURT (Fourth Chamber),

composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and M. van der Woude, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 18 September 2010,

having regard to the response of OHIM lodged at the Registry of the Court on 23 February 2011,

having regard to the response of the intervener lodged at the Registry of the Court on 4 February 2011,

having regard to the decision of 28 April 2011 refusing leave to lodge a reply,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 The intervener, Sisma SpA, is the proprietor of the Community figurative mark registered under number 4279295 (‘the contested mark’), in respect of which an application for registration was filed with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 9 February 2005 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)). The contested mark was registered on 30 November 2006 for, inter alia, goods in Classes 24 and 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and corresponding, for each of those classes, to the following description:

– Class 24: ‘Textiles; elastic woven material; adhesive fabric for application by heat; fabric of imitation animal skins; woollen fabric; blankets; travelling rugs; table covers; textile articles; wallpaper of textile; handkerchiefs of textile; flags; serviettes of textile and non-woven textile fabrics; table mats of textile; table napkins of textile; synthetic fabrics for baby-changing’;

– Class 25: ‘Clothing for gentlemen, ladies and children in general, including clothing in leather; shirts; blouses; skirts; suits; jackets; trousers; shorts; jerseys; t-shirts; pyjamas; stockings; singlets; corsets; suspenders; underpants; brassieres; slips; hats; headscarves; ties; raincoats; overcoats; coats; swimming costumes; tracksuits; anoraks; ski pants; belts; fur coats; mufflers; gloves; dressing gowns; footwear in general, including slippers, shoes, sports shoes, boots and sandals; babies’ napkins of textile; babies’ bibs’.

2 The contested mark is the following figurative sign:

3 On 20 February 2007 the applicant, Dosenbach-Ochsner AG Schuhe und Sport, filed with OHIM an application for a declaration of invalidity of the contested mark under Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009).

4 The application for a declaration of invalidity related to the registration of the contested mark for the goods listed in paragraph 1 above. It was based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) between that mark and the following earlier marks:

– the German word mark elefanten, applied for on 14 March 1987 and registered on 24 January 1989 under number 1133678, for goods in Class 25 and corresponding to the following description: ‘shoes’;

– the international figurative mark reproduced below, covering in particular the Czech Republic, registered on 29 May 1999, under number 715019, for goods in Class 25 and corresponding to the following description: ‘shoes and footwear’:

– the German figurative mark, reproduced below, applied for on 9 November 2000 and registered on 22 January 2001, under number 30082400, for, inter alia, ‘children’s blankets, children’s bedsheets, children’s face towels, children’s sleeping bags, textile bags and textile carriers for children’ in Class 24 and ‘children’s clothing, children’s headwear; children’s belts’ in Class 25:

5 By decision of 9 September 2008, the Cancellation Division of OHIM dismissed the application for a declaration of invalidity on the ground that there was no likelihood of confusion between the contested mark and the earlier marks. On 12 November 2008, the applicant filed a notice of appeal against the Cancellation Division’s decision.

6 By decision of 15 July 2010 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal.

7 First, the Board of Appeal held, in paragraph 16 of the contested decision, that the relevant public was composed of average consumers, reasonably well-informed and reasonably observant and circumspect, in Germany and in the Czech Republic.

8 Second, the Board of Appeal agreed, in paragraph 17 of the contested decision, with the Cancellation Division’s assessment that some of the goods covered by both the contested mark and the earlier marks were identical or similar, while others were different.

9 Third, the Board of Appeal took the view, in paragraphs 20 to 24 of the contested decision, that the contested mark was not visually similar to the earlier marks, taking into account in particular the differences between the representations of the figure of an elephant in the contested mark and in the earlier figurative marks.

10 Fourth, the Board of Appeal found, in paragraphs 25 to 27 of the contested decision, that the marks at issue were not phonetically similar, given that, first, figurative marks, including the contested mark, are not pronounced, and that, second, the oral descriptions of the marks concerned did not correspond.

11 Fifth, the Board of Appeal found, in paragraph 28 of the contested decision, that there was conceptual similarity resulting from the reference to an...