Judgments nº T-116/06 of Court of First Instance of the European Communities, September 24, 2008

• Resolution Date: September 24, 2008
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-116/06

In Case T-116/06,

Oakley, Inc., established in One Icon, Foothill Ranch (United States), represented by M. Huth-Dierig and M. Nentwig, lawyers,

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, intervener before the Court of First Instance, being

Venticinque Ltd, established in Hailsham, East Sussex (United Kingdom), represented by D. Caneva, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 17 January 2006 (Joined Cases R 682/2004-1 and R 685/2004-1) concerning invalidity proceedings between Venticinque Ltd and Oakley, Inc.,

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

composed of E. Martins Ribeiro (Rapporteur), President, S. Papasavvas and N. Wahl, Judges,

Registrar: C. Kristensen, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 13 April 2006,

having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 23 June 2006,

having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 25 July 2006,

further to the hearing on 10 January 2008,

gives the following

Judgment

Background to the dispute

1 On 7 February 2001 the applicant, Oakley, Inc., filed an application for a Community trade mark with 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.

2 The trade mark for which registration was sought is the word mark O STORE.

3 The services in respect of which registration was sought fall within Class 35 of the Nice Agreement of 15 June 1957 on the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and are as follows: -Retail and wholesale services, including on-line retail store services; retail and wholesale of eyewear, sunglasses, optical goods and accessories, clothing, headwear, footwear, watches, timepieces, jewellery, decals, posters, athletic bags, backpacks and knapsacks, and wallets-.

4 The application was published in the Community Trade Marks Bulletin No 77/01 of 3 September 2001.

5 On 11 February 2002, the applicant was granted registration of the Community trade mark O STORE with the number 2 074 599.

6 On 14 October 2002, the intervener, Venticinque Ltd, applied for a declaration of invalidity in respect of all the services protected by the registration of the Community trade mark, pursuant to Article 52(l)(a) and Article 8(1)(b) of Council Regulation No 40/94. That application was based on the existence of a likelihood of confusion between the Community trade mark and the earlier word mark THE O STORE, which was registered on 28 December 2000 in France with the number 3 073 591 for goods in Classes 18 and 25 of the Nice Classification:

- Class 18: -Leather and imitations of leather, and goods made of these materials and not included in other classes, namely suitcases, cosmetic cases sold empty, evening bags, handbags, shopping bags, rucksacks, all-purpose sport bags, drawstring pouches, zippered pouches, felt pouches, document holders, briefcases, wallets, and purses; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery-;

- Class 25: -Clothing, namely suits, dress shirts, trousers, jackets, sport jackets, pullovers, skirts, blouses, sweaters, cardigans, overcoats, coats, mantles, sport shirts, blousons, raincoats, evening dresses, dress-coats, scarves, shawls, foulards, neckties, gloves, fur jackets, fur coats, fur stoles, Bermuda shorts, t-shirts, polo shirts, chemises, pareus, pyjamas, nightgowns, dressing gowns, bathrobes, stockings, socks, petticoats, bathing suits, swimming costumes, panties, bras and singlets; headwear, footwear-.

7 By decision of 18 June 2004, the Cancellation Division upheld the application for a declaration of invalidity in relation, first, to services consisting of -retail and wholesale of clothing, headwear, footwear, athletic bags, backpacks and knapsacks and wallets-, on the ground that, even if the nature, intended purpose and method of use of those services differed from those of the goods covered by the earlier national mark, they might share the same distribution channels, and, second, to -retail and wholesale services, including online retail store services-, on the ground that, the wording of those services being general, it includes the sale of any sort of goods, including those covered by the earlier mark. On the other hand, the Cancellation Division dismissed the application for a declaration of invalidity with regard to services consisting of -retail and wholesale of eyewear, sunglasses, optical goods and accessories, watches, timepieces, jewellery, decals, posters-, because it took the view that retail services relating to those products did not share the same distribution channels as leather goods and clothing covered by the earlier mark.

8 On 5 and 6 August 2004, the applicant and the intervener each filed an appeal against the decision of the Cancellation Division.

9 By decision of 17 January 2006 (-the contested decision-), the First Board of Appeal upheld the decision of the Cancellation Division and accordingly dismissed the two appeals.

10 The Board of Appeal found, essentially, that:

- the services consisting of the -retail and wholesale of clothing, headwear, footwear, athletic bags, backpacks, knapsacks and wallets- covered by the Community trade mark were very similar in nature and in purpose and identical in method of use and in distribution channels to the goods in Classes 18 and 25 covered by the earlier trade mark. Furthermore, those goods and services were complementary. There was therefore a clear similarity in respect of the goods retailed which were identical or similar to those sold under the earlier mark. Finally, the signs were also very similar, the only difference being the omission, in one of the two signs, of the non-distinctive article -the-, with the result that there was a likelihood of confusion;

- there was no likelihood of confusion with regard to -retail and wholesale of eyewear, sunglasses, optical goods and accessories, watches, timepieces, jewellery, decals, posters- because, despite the similarity of the trade marks in question, those services differed from the goods in Classes 18 and 25 covered by the earlier mark;

- as regards -retail and wholesale services, including on-line retail store services-, the proprietor of the Community trade mark had not limited those services to specific goods, with the result that that general wording must include the goods covered by the earlier mark. Therefore, those services being similar to the goods covered by the earlier mark, there was a likelihood of confusion.

Forms of order sought by the parties

11 The applicant claims that the Court should:

- annul the contested decision;

- order OHIM to pay the costs.

12 OHIM contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

13 The intervener contends that the Court should:

- dismiss the action;

- alter the contested decision to the extent that it denies the likelihood of confusion between the goods covered by the mark THE O STORE and the services consisting of -retail and wholesale of eyewear, sunglasses, optical goods and accessories, watches, timepieces, jewellery, decals, posters- for which the mark O STORE was registered;

- alter the contested decision to the extent that it does not declare the complete invalidity of the Community trade mark O STORE, registered on 11 February 2002, in the light of the existence of the French trade mark THE O STORE registered on 28 December 2000.

14 At the hearing, OHIM declared that it was withdrawing the plea of inadmissibility which it had raised in its response to the applicant-s request also seeking the annulment of the contested decision, in so far as the Board of Appeal upheld the decision of the Cancellation Division rejecting the application for a declaration of the invalidity of the Community trade mark O STORE for services consisting of -retail and wholesale of eyewear, sunglasses, optical goods and accessories, watches, timepieces, jewellery, decals, and posters-; formal notice of this was taken in the minute of the hearing.

Law

15 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94. The intervener has made an application under Article 134(3) of the Court-s Rules of Procedure.

Plea alleging infringement of Article 8(1)(b) of Regulation No 40/94

Arguments of the parties

16 The first branch of the applicant-s argument is that there is absolutely no similarity between the goods and services concerned, with the result that the Board of Appeal was wrong to affirm the existence of such similarity. First, the Board of Appeal misinterpreted the nature of the retail services provided. Second, it misapplied the judgment of the Court in Case C-39/97 Canon [1998] ECR I-5507. Finally, it wrongly rejected the applicant-s argument that similarity between the goods and services should be denied in order to preclude an overly broad scope of protection for retail service marks in general.

17 First, regarding the nature of the services provided in connection with retail trade, the applicant considers that the Board of Appeal regards them as a mere act of sale of goods, thereby equating them with the goods being retailed. That is contrary to the Court-s judgment in Case C-418/02 Praktiker Bau- und Heimwerkermärkte [2005] ECR I-5873. The applicant points out that during the last decade it has in fact become more and more commonly accepted...