Judgments nº T-391/15 of The General Court, December 15, 2016

Resolution DateDecember 15, 2016
Issuing OrganizationThe General Court
Decision NumberT-391/15

(EU trade mark - Opposition proceedings - Application for the EU word mark ALDIANO - Earlier EU word mark ALDI - Genuine use of the earlier mark - Article 42(2) of Regulation (EC) No 207/2009 - Rule 22(3) of Regulation (EC) No 2868/95) In Case T-391/15,

Aldi GmbH & Co. KG, established in Mülheim an der Ruhr (Germany), represented by N. Lützenrath, U. Rademacher, C. Fürsen and N. Bertram, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

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

Cantina Tollo SCA, established in Tollo (Italy), represented by F. Celluprica and F. Fischetti, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 May 2015 (Case R 1612/2014-4), concerning opposition proceedings between Aldi and Cantina Tollo,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, I. Labucka (Rapporteur) and I. Ulloa Rubio, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 17 July 2015,

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

having regard to the response of the intervener lodged at the Court Registry on 11 December 2015,

having regard to the change in the composition of the Chambers of the General Court,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 6 June 2012, the applicant, Cantina Tollo SCA, lodged 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 word mark ALDIANO.

3 The goods in respect of which registration was sought are in Class 33 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 to the following description: ‘alcoholic beverages (except beers)’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 129/2012 of 10 July 2012.

5 On 8 October 2012, the applicant, Aldi GmbH & Co. KG, 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 referred to in paragraph 3 above.

6 The opposition was based on the EU word mark ALDI, registered under number 2071728 on 14 April 2005 for goods and services in Classes 3, 4, 7, 9, 16, 24, 25, 29 to 34 and 36, including ‘alcoholic beverages (except beers)’ covered in Class 33.

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

8 At the request of the intervener, the Opposition Division asked the applicant to furnish evidence of the use of the earlier mark in accordance with Article 42(2) of Regulation No 207/2009.

9 On 16 August 2013, the applicant submitted the following evidence:

- an affidavit of an employee of Aldi Supermercados SL;

- three copies of advertisements for several products, in particular for the wines ‘Espiral Vinho Verde’, ‘ROSSO TOSCANO’ and ‘BONUS Vino Blanco’;

- two copies of (draft) prints of labels for the wines ‘BONUS Vino Blanco’ and ‘Espiral Vinho Verde’ on the back of which appears a reference to Aldi;

- three photographs of bottles and a box for the wines ‘Espiral Vinho Verde’, ‘ROSSO TOSCANO’ and ‘BONUS Vino Blanco’;

- 11 copies of invoices from suppliers to the applicant’s sales companies located in Spain.

10 By decision of 12 June 2014, the Opposition Division rejected the opposition in its entirety. It considered that the evidence submitted was insufficient to prove the genuine use of the earlier mark for the goods and services for which it was registered.

11 On 26 June 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

12 By decision of 13 May 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In essence, it considered that the evidence submitted by the applicant did not demonstrate genuine use of the earlier mark for the goods for which it had been registered. The Board of Appeal stated that the evidence submitted, except for an affidavit uncorroborated by other documentary evidence, did not demonstrate that the goods had actually been sold on the market and were marketed under the mark ALDI. Thus, neither the extent nor the nature of the use of the earlier mark had been proved for the goods and services covered by the earlier mark.

Forms of order sought

13 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

14 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

15 In support of its action, the applicant relies on a single plea in law, based on infringement of Article 42(2) of Regulation No 207/2009 and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing...

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