Judgments nº T-67/15 of The General Court, November 10, 2016

• Resolution Date: November 10, 2016
• Issuing Organization: The General Court
• Decision Number: T-67/15

(EU trade mark - Opposition proceedings - Application for the EU figurative mark POLO CLUB SAINT-TROPEZ HARAS DE GASSIN - Earlier EU figurative marks BEVERLY HILLS POLO CLUB - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 - Production of additional evidence - Discretion conferred by Article 76(2) of Regulation No 207/2009 - Remittal of the case in part to the Opposition Division - Article 64(1) and (2) of Regulation No 207/2009) In Case T-67/15,

Polo Club, established in Gassin (France), represented by D. Masson, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by V. Melgar and H. Kunz and subsequently by H. O’Neil, acting as Agents,

defendant,

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

Lifestyle Equities CV, established in Amsterdam (Netherlands), represented by D. Russo and V. Wellens, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 November 2014 (Case R 1882/2013-5), relating to opposition proceedings between Lifestyle Equities and Polo Club,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis (Rapporteur), President, V. Kreuschitz and D. Spielmann, Judges,

Registrar: J. Weichert, Administrator,

having regard to the application lodged at the Court Registry on 12 February 2015,

having regard to the response of EUIPO lodged at the Court Registry on 15 June 2015,

having regard to the response of the intervener lodged at the Court Registry on 3 June 2015,

having regard to the written questions put to the parties by the General Court and their oral replies at the hearing,

further to the hearing on 14 July 2016,

gives the following

Judgment

Background to the dispute

1 On 23 December 2011, the applicant, Polo Club, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the following colour figurative sign:

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 3 and 41 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 3: ‘Soaps; perfumes, perfumery; essential oils, cosmetics, hair lotions; dentifrices’;

- Class 41: ‘Training, education, entertainment; arranging and conducting of conferences, colloquiums, workshops, congresses, seminars, competitions (education or entertainment); production of films and video-tape films, radio programmes, radio and television entertainment, editing of video tapes, radio and television programmes, organisation of exhibitions for cultural or educational purposes, cultural activities, organisation of shows (impresario services); publication of books and texts (not including publicity texts)’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 30/2012 of 13 February 2012.

5 On 2 May 2012, the intervener, Lifestyle Equities CV, filed a notice of opposition to registration of the mark applied for, inter alia in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.

6 The opposition was based on, inter alia, the earlier EU figurative marks registered under numbers 4033742 and 9415787, both of which consist of the following figurative sign in black and white:

7 The earlier mark No 4033742 was registered on 9 May 2009 for goods in Class 3 of the Nice Agreement corresponding to the following description: ‘Soaps, perfumery, essential oils, cosmetics, lotions, creams, gels, powders, lipsticks, deodorants and antiperspirants, expressly excluding toothpaste, mouthwash and products for oral and dental care and hygiene.’

8 The earlier mark No 9415787 was registered on 6 March 2011, inter alia, for services in Class 41 of the Nice Agreement corresponding to the following description: ‘Education; providing of training; entertainment; sporting and cultural activities.’

9 The intervener also based its opposition on three other earlier EU marks (‘the other earlier marks’) consisting of the same sign as that set out in paragraph 6 above, for goods other than those covered by the earlier marks Nos 4033742 and 9415787, and which had been registered at the latest in November 2006.

10 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

11 The intervener claimed enhanced distinctive character of the earlier marks by producing some evidence for that purpose, within the time limit specified in accordance with Rule 19(1) and (2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), in order to prove, inter alia, the existence, validity and scope of the protection of the earlier marks, which expired on 28 September 2012.

12 On 10 January 2013, upon the applicant’s request, EUIPO invited the intervener to adduce evidence to prove genuine use of the other earlier marks pursuant to Article 42(2) of Regulation No 207/2009.

13 The intervener replied to the invitation on 20 March 2013, that is to say, within the time limit, by submitting to the Opposition Division evidence additional to that referred to in paragraph 11 above (‘the additional evidence’), in order to demonstrate not only genuine use but also the enhanced distinctive character of its trade marks.

14 By decision of 31 July 2013, the Opposition Division rejected the opposition in its entirety, finding that there was no likelihood of confusion in the case at hand. To that end, it found that the evidence referred to in paragraph 11 above was insufficient to demonstrate that the earlier marks had enhanced distinctive character as a result of the intervener’s use of them and that the additional evidence could not be taken into account in order to establish the existence of such distinctive character, on the ground that it had been filed after the time limit referred to in paragraph 11 above. According to the Opposition Division, in the absence of sufficient admissible evidence to establish enhanced distinctive character, the signs at issue were insufficiently similar to find that there was a likelihood of confusion, even if the goods and services concerned were identical. Accordingly, the Opposition Division did not adjudicate on the issue of whether genuine use of the other earlier marks had been proved.

15 On 25 September 2013, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

16 By decision of 21 November 2014 (the ‘contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division in its entirety, on the one hand, upholding the opposition in respect of the goods referred to in paragraph 3 above, and, on the other hand, remitting the case to the Opposition Division as to the remainder.

17 Concerning the first part of the result set out in paragraph 16 above, the Board of Appeal found, in essence, that:

- the signs at issue were visually and phonetically similar to a low degree, whereas conceptually they were similar, if not highly similar;

- the earlier marks had at least normal inherent distinctive character for the services in question in Class 41, given that those services may relate to the teaching of polo and organising the competition of polo, but enhanced inherent distinctive character for the goods concerned in Class 3, in relation to which the device of a polo player had high imaginative content;

- account had to be taken only of the goods and services covered by the earlier marks Nos 4033742 and 9415787, and those marks were not subject to proof of genuine use as they benefited from the five-year grace period as from their registration, provided for in the final clause of the first sentence of Article 42(2) of Regulation No 207/2009;

- the goods in Class 3 protected by the earlier mark No 4033742 were identical to those covered by the mark applied for;

- the services in Class 41 covered by the earlier mark No 9415787 were partly identical and partly similar to those covered by the mark applied for;

- there was a likelihood of confusion between the mark applied for and those earlier marks for those goods and services.

18 Concerning the second part of the result set out in paragraph 16 above, the Board of Appeal observed that in order not to deprive the interested parties of the possibility of review by the second instance at EUIPO, it was for the Opposition Division to be the first to decide on the proof of genuine use of the other earlier marks and, where appropriate, on the likelihood of confusion for the other goods and services covered by the marks at issue. In that regard, the Board of Appeal stated that the Opposition Division had erred in refusing to take into consideration the additional evidence in order to determine whether the earlier marks had enhanced distinctive character as a result of the intervener’s use.

Forms of order sought

19 As a result of clarifications provided at the hearing in reply to oral questions from the Court, the applicant claims that the Court should:

- declare the present action admissible;

- annul the contested decision;

- order EUIPO to pay the costs incurred by the applicant in the present proceedings.

20 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs incurred by EUIPO.

21 As a result of clarifications provided at the hearing in reply to oral questions from the Court, the...