Judgments nº T-624/13 of The General Court, October 02, 2015

• Resolution Date: October 02, 2015
• Issuing Organization: The General Court
• Decision Number: T-624/13

(Community trade mark - Opposition proceedings - Figurative mark Darjeeling - Earlier Community collective word and figurative marks DARJEELING - Relative grounds for refusal - Article 8(1)(b) and (5) of Regulation (EC) No 207/2009) In Case T-624/13,

The Tea Board, established in Calcutta (India), represented by A. Nordemann and M. Maier, lawyers,

applicant,

v

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

defendant,

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

Delta Lingerie, established in Cachan (France), represented by G. Marchais and P. Martini-Berthon, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 17 September 2013 (Case R 1504/2012-2) concerning opposition proceedings between The Tea Board and Delta Lingerie,

THE GENERAL COURT (Eighth Chamber),

composed of D. Gratsias (Rapporteur), President, M. Kancheva and C. Wetter, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 25 November 2013,

having regard to the response of OHIM lodged at the Court Registry on 2 May 2014,

having regard to the response of the intervener lodged at the Court Registry on 18 April 2014,

having regard to the order of 24 October 2014 joining Cases T-624/13 to T-627/13 for the purposes of the oral procedure,

further to the hearing on 11 February 2015,

gives the following

Judgment

Background to the dispute

1 On 22 October 2010, the intervener, Delta Lingerie, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the figurative sign reproduced below, comprising the word element ‘darjeeling’ depicted in white letters inside a light green rectangle:

3 The goods and services in respect of which registration was sought are in Classes 25, 35 and 38 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:

- Class 25: ‘Women’s undergarments and day and night lingerie, in particular girdles, bodies, bustiers, basques, bras, panties, G-strings, tangas, brassieres, shorties, boxer shorts, garter belts, suspenders, garters, camisoles, short nighties, panty hose, stockings, swimwear; Clothing, knitwear, body linen, slipovers, T-shirts, corsets, bodices, short nighties, boas, overalls, combinations (clothing), sweaters, bodies, pyjamas, nightgowns, trousers, indoor trousers, shawls, dressing gowns, bathrobes, swimwear, bathing trunks, petticoats, scarves’;

- Class 35: ‘Retailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen; Business consultancy with regard to the creation and operation of retail outlets and central purchasing agencies for retailing and advertising purposes; Sales promotion (for others), advertising, business management, business administration, on-line advertising on a computer network, distribution of advertising material (leaflets, flyers, free newspapers, samples), arranging newspaper subscriptions for others; Business information or enquiries; Organisation of events and exhibitions for commercial or advertising purposes, advertising management, rental of advertising space, radio and television advertising, advertising sponsorship’;

- Class 38: ‘Telecommunications, computer-aided transmission of messages and images, interactive television broadcasting services relating to the presentation of products, communications by computer terminals, communications (transmissions) on the open and closed world wide web’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 4/2011 of 7 January 2011.

5 On 7 April 2011, the applicant, The Tea Board, a body formed under the 1953 Indian Tea Act (No 29 of 1953) and empowered to administer the production of tea, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the following earlier trade marks:

- the earlier Community collective word mark DARJEELING, applied for on 7 March 2005 and registered on 31 March 2006 under No 4 325 718;

- the earlier Community collective figurative mark reproduced below, applied for on 10 November 2009 and registered on 23 April 2010 under No 8 674 327:

7 The two Community collective marks cover goods in Class 30 corresponding to the following description: ‘Tea’.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1) and (5) of Regulation No 207/2009.

9 In addition, as can be seen from the evidence produced by the applicant before the Board of Appeal, the word element ‘darjeeling’ - the word element shared by the signs at issue - is a protected geographical indication for tea, registered through Commission Implementing Regulation (EU) No 1050/2011 of 20 October 2011 entering a name in the register of protected designations of origin and protected geographical indications (Darjeeling (PGI)) (OJ 2011 L 276, p. 5) following an application received on 12 November 2007. That implementing regulation was adopted on the basis of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 2006 L 93, p. 12), since replaced by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 2012 L 343, p. 1).

10 On 10 July 2012, the Opposition Division rejected the opposition on the ground that, first, regarding the application of Article 8(1) of Regulation No 207/2009, the goods and services covered by the signs at issue were dissimilar and, second, regarding the application of Article 8(5) of that regulation, the evidence provided by the applicant was insufficient to establish that the earlier Community collective marks had a reputation with the relevant public.

11 On 10 August 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

12 By decision of 17 September 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and upheld the Opposition Division’s decision. In particular, it concluded that, in view of the lack of similarity between the goods and services covered by the signs at issue, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Similarly, it dismissed the alleged infringement of Article 8(5) of that regulation, on the ground that the evidence provided by the applicant was insufficient to establish that the conditions for applying that provision were met.

Forms of order sought

13 The applicant claims that the Court should:

- annul the contested decision;

- order OHIM to pay the costs.

14 OHIM contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

15 The intervener contends that the Court should:

- uphold the contested decision;

- order the applicant to pay the costs.

Law

1. Admissibility of documents and evidence produced for the first time before the General Court

   16 The applicant has produced before the Court two images, reproduced in the body of the application and representing the store front of one or more of the intervener’s retail outlets, two images, reproduced in the body of the application and used by the intervener for advertising purposes, several pages taken from a website entitled ‘Lingerie Stylist Blog’ (Annex 7) and several pages taken from a website entitled ‘TheStriversRow’ (Annex 8). Those items, as the applicant confirmed at the hearing, were not produced before the bodies of OHIM.

   17 OHIM disputes both the admissibility of those images and annexes and their probative value. For its part, the intervener contends that the aforementioned items are irrelevant in the present case.

   18 According to settled case-law, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted, since it is not the General Court’s function to review the facts in the light of evidence which has been adduced for the first time before it. Accordingly, the abovementioned items must be excluded, without it being necessary to assess their probative value (order of 7 February 2013 in Majtczak v Feng Shen Technology and OHIM, C-266/12 P, EU:C:2013:73, paragraph 45; see also judgment of 24 November 2005 in Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE), T-346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited).

2. Substance

   19 The applicant raises two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and the second alleging infringement of Article 8(5) of that regulation.

   First plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009

   20 In its first plea in law, the applicant argues that the Board of Appeal wrongly ruled out a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 after finding that the goods and services covered by the...