Judgments nº T-39/16 of The General Court, April 06, 2017

• Resolution Date: April 06, 2017
• Issuing Organization: The General Court
• Decision Number: T-39/16

(EU trade mark - Opposition proceedings - International registration designating the European Union - Figurative mark NANA FINK - Earlier EU word mark NANA - No similarity between the goods - Article 8(1)(b) of Regulation (EC) No 207/2009 - Extent of the examination to be carried out by the Board of Appeal - Duty to rule on the entirety of the action)

In Case T-39/16,

Nanu-Nana Joachim Hoepp GmbH & Co. KG, established in Bremen (Germany), represented by T. Boddien, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Schifko, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Nadine Fink, residing in Basel (Switzerland),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 November 2015 (Case R 679/2014-1), relating to opposition proceedings between Nanu-Nana Joachim Hoepp and Ms Fink,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 25 January 2016,

having regard to the response lodged at the Court Registry on 25 April 2016,

having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 30 November 2016,

having regard to the fact that no request for a hearing was submitted by the 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 29 March 2012, the company of which Ms Nadine Fink is the successor obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1111651 designating the European Union for the following figurative mark:

2 The goods in respect of which that international registration was obtained are in Classes 14, 18 and 26 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 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith (included in this class); jewellery, precious stones; horological and chronometric instruments; key rings; cases for watches (presentation), fittings and ornaments for zip fasteners of precious metals’;

- Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, satchel bags, pocket wallets’;

- Class 26: ‘Belt clasps, fittings and ornaments for zip fasteners of precious metals’.

3 That international registration was notified to 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). It was published in Community Trade Marks Bulletin No 71/2012 of 13 April 2012. On 24 August 2012, that international registration was transferred to Ms Fink.

4 On 9 January 2013, the applicant, Nanu-Nana Joachim Hoepp GmbH & Co. KG, filed a notice of opposition, pursuant to Articles 41 and 156 of Regulation No 207/2009, to the international registration, in so far as it designated the European Union, in respect of all the goods referred to in paragraph 2 above.

5 The opposition was based on the earlier EU word mark NANA, registered on 19 April 2011 under No 6218945 covering inter alia goods in Classes 14, 18 and 26 and corresponding, for each of those classes, to the following description:

- Class 14: ‘Horological and chronometric instruments of all kinds; costume jewellery; key fobs; jewellery; decorative articles of precious metal’;

- Class 18: ‘Leather and imitations of leather, and goods made of these materials (included in Class 18); bags of all kinds (included in Class 18); pocket wallets, purses; cases of all kinds (included in Class 18); umbrellas, parasols and walking sticks; travel requisites and parts therefor (included in Class 18)’;

- Class 26: ‘Artificial flowers’.

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

7 By decision of 21 January 2014, the Opposition Division upheld the opposition in part. The opposition was rejected, due to the lack of similarity of the goods, so far as concerns the following goods:

- Class 14: ‘Fittings and ornaments for zip fasteners of precious metals; precious metals and their alloys’;

- Class 18: ‘Leather and imitations of leather, not included in other classes; animal skins’;

- Class 26: ‘Belt clasps, fittings and ornaments for zip fasteners of precious metals’.

8 The Opposition Division upheld the opposition, because of a likelihood of confusion, as regards the other goods covered by the international registration at issue.

9 On 7 March 2014, the applicant filed an appeal with EUIPO against the decision of the Opposition Division pursuant to Articles 58 to 64 of Regulation No 207/2009.

10 By decision of 12 November 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. It took the view, inter alia, that the Opposition Division had rejected the opposition for the following goods:

- Class 14: ‘Fittings and ornaments for zip fasteners of precious metals’;

- Class 18: ‘Leather and imitations of leather, not included in other classes; animal skins’;

- Class 26: ‘Belt clasps, fittings and ornaments for zip fasteners of precious metals’.

11 The Board of Appeal held that those goods and the goods covered by the earlier mark were not similar. In this context, it noted inter alia that the goods were, in part, spare parts and, in part, raw materials or semi-finished materials - used in the first place in the manufacture of other goods and directed at a particularly observant specialist public - whereas the goods covered by the earlier mark were end products, intended for the reasonably observant end consumer. The Board of Appeal concluded that, given the lack of similarity of the goods at issue, there was no likelihood of confusion between the marks at issue.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

13 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

The admissibility of certain arguments put forward by the applicant

14 EUIPO argues that the applicant largely bases its claims regarding the similarity of the goods in Classes 14, 18 and 26 in the light of goods - such as ‘belts’, ‘clothes’ or ‘furniture’, ‘articles of bedding’ and ‘artists’ materials’ - which are in fact covered by other classes for which the earlier mark was registered, but which have not been the subject of administrative proceedings before EUIPO. Therefore, EUIPO submits, the applicant’s explanations in respect of those other goods must be considered inadmissible.

15 Furthermore, EUIPO claims that the applicant puts forward new arguments for the first time before the Court. In that regard, first of all, EUIPO refers to the applicant’s claim that ‘leather’ and ‘animal skins’ are not only used as raw materials intended for transformation into end products, but are also sold directly on the market as such as, inter alia, decoration objects. EUIPO goes on to submit that the applicant’s line of argument that the earlier mark of which it is the proprietor is also registered for actual ‘imitations of leather’ is also new. Finally, EUIPO points to the novel nature of the applicant’s argument relating to the approach followed by the Board of Appeals in earlier decisions, on the occasion of which they found a similarity between ‘leather’ and ‘animal skins’ for the purpose of semi-manufactured goods, first, and end products, manufactured from those materials, second. Given that those arguments are being submitted for the first time before the Court, they should, in EUIPO’s view, for that reason be declared inadmissible.

16 It must be noted that, according to settled case-law, the purpose of actions brought before the Court pursuant to Article 65(2) of Regulation No 207/2009 is to secure a review of the lawfulness of decisions of the Boards of Appeal. In the context of that regulation, Article 76 thereof requires that review to be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see, to that effect, judgment of 1 February 2005, SPAG v OHIM - Dann and Backer (HOOLIGAN), T-57/03, EU:T:2005:29, paragraph 17 and the case-law cited).

17 Moreover, under Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal.

18 EUIPO’s arguments relating to the admissibility of certain of the applicant’s arguments must be examined in the light of those principles.

19 As regards the admissibility of the applicant’s argument concerning the comparison of the goods at issue in the light of goods other than those which were the subject of the administrative proceedings before EUIPO, it must be noted that, on the opposition form, the applicant did not select, under the section ‘goods and services on which the opposition is based’, the box ‘all the goods and services covered by the registration/application’, but the box ‘part of the goods and services, namely’ and indicated, in that section, ‘all the goods in Classes 14, 18 and 26’. The applicant thus based the opposition solely on the goods in...