Judgments nº T-681/15 of The General Court, May 03, 2017

• Resolution Date: May 03, 2017
• Issuing Organization: The General Court
• Decision Number: T-681/15

(EU trade mark - Opposition proceedings - Application for an EU figurative mark representing a wolf’s head - Earlier international figurative mark Outils WOLF - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-681/15,

Environmental Manufacturing LLP, established in Stowmarket (United Kingdom), represented by S. Malynicz QC,

applicant,

v

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

defendant,

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

Société Elmar Wolf, established in Wissembourg (France), represented by N. Boespflug, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 3 September 2015 (Case R 1252/2015-1), relating to opposition proceedings between Société Elmar Wolf and Environmental Manufacturing,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 20 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 31 March 2016,

having regard to the response of the intervener lodged at the Court Registry on 23 March 2016,

further to the hearing on 13 January 2017,

gives the following

Judgment

Background to the dispute

1 The applicant, Environmental Manufacturing LLP, is the proprietor of the rights connected with the application for registration of the EU trade mark filed by its predecessor in law, Entec Industrie Limited, on 9 March 2006, under the number 4971511, with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by 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 figurative sign:

3 The goods in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Class 7 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: ‘Machines for professional and industrial processing of wood and green waste; professional and industrial wood chippers and shredders’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 38/2006 of 18 September 2006.

5 On 18 December 2006, the intervener, Société Elmar Wolf, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

6 The opposition was, in particular, based on the following earlier marks and rights:

- the French figurative mark registered on 8 April 1999 under the number 99786007 in respect of goods in Classes 1, 5, 7, 8, 12 and 31, corresponding to the figurative sign in red and yellow reproduced below:

- the French figurative mark registered on 22 September 1948 under the number 1480873 and extended, under the Madrid Agreement, to Spain and Portugal, in respect of goods in Classes 7 and 8, namely ‘ploughing implements, implements for gardening and implements for cultivation’, reproduced at the end of the paragraph;

- the international figurative mark registered on 22 June 1951 under the number 154431, with effect in Spain and Portugal, in respect of goods in Classes 7 and 8, namely ‘ploughing implements, implements for gardening and implements for cultivation’, reproduced at the end of the paragraph;

- the international figurative mark registered on 20 January 1969 under the number 352868, with effect in Spain, in respect of goods in Class 7, namely ‘motor-driven lawnmowers, hand-operated lawnmowers, the spare parts and accessories thereof; land cultivation implements, instruments and accessories for the lawn, the garden, horticulture and, more generally, land cultivation implements, agricultural implements; machines, machine tools, motors and engines (except for vehicles)’, goods in Class 8, namely ‘mowers of all kinds, the spare parts and accessories thereof, instruments and accessories for the lawn, the garden, horticulture and, more generally, land cultivation implements, agricultural implements’, goods in Class 12, namely ‘wheelbarrows and trolleys; wheeled roll stands for watering hoses and, more generally, vehicles; apparatus for locomotion by land, air or water’ and goods in Class 21, namely ‘metal brushes; sprinklers for the lawn, the garden, horticulture and agriculture as well as watering cans; roll stands, particularly for watering hoses and for electrical cables’, reproduced below:

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).

8 On 25 January 2010, the Opposition Division rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009 on the ground that there was no likelihood of confusion between the signs at issue. The Opposition Division also rejected the opposition based on Article 8(5) of that regulation on the ground that the intervener had not adduced evidence of any detriment to the repute of the earlier marks or any unfair advantage gained from them.

9 On 23 March 2010, the intervener appealed against the Opposition Division’s Decision.

10 By decision of 6 October 2010, the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division, upholding the opposition based on Article 8(5) of Regulation No 207/2009. Consequently, the application for registration was rejected without it being necessary to examine the grounds of opposition based on Article 8(1)(b) of that regulation.

11 By application lodged at the Registry of the General Court on 17 December 2010, the applicant brought an action for the annulment of the decision of the Second Board of Appeal. In that action, the applicant, inter alia, alleged infringement of Article 8(5) of Regulation No 207/2009, in so far as the Board of Appeal had found that there was a risk of dilution and a risk of free-riding.

12 By judgment of 22 May 2012, Environmental Manufacturing v OHIM - Wolf (Representation of the head of a wolf) (T-570/10, EU:T:2012:250), the General Court held that the Board of Appeal had been right in finding that the use of the mark applied for would give rise to a risk of dilution of the earlier marks constituting detriment to the distinctive character of those marks. It therefore dismissed the applicant’s action without examining the arguments relating to the risk of free-riding.

13 The applicant appealed against that judgment.

14 By judgment of 14 November 2013, Environmental Manufacturing v OHIM (C-383/12 P, EU:C:2013:741), the Court of Justice set aside the judgment of 22 May 2012, Representation of the head of a wolf (T-570/10, EU:T:2012:250). The Court of Justice held that the mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009, to the extent that that similarity does not cause any confusion in their minds. According to the case-law, proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future. The Court of Justice therefore held that, by not examining that condition, the General Court had erred in law (paragraphs 34 to 44 of the judgment) and referred the case back to the General Court.

15 By judgment of 5 February 2015, Environmental Manufacturing v OHIM - Wolf (Representation of the head of a wolf) (T-570/10 RENV, not published, EU:T:2015:76), the General Court annulled the Second Board of Appeal’s decision of 6 October 2010 on the ground that that Board of Appeal had found, first, that there was a risk of dilution without ascertaining whether the use of the mark applied for might lead to a change in the economic behaviour of the average consumer and, secondly, that an unfair advantage might be secured through the use of the mark applied for without ascertaining whether any particular quality associated with the earlier mark was capable of being transferred to the goods covered by the mark applied for.

16 The case was remitted to the Board of Appeal for further examination. By decision of 23 June 2015, the Presidium of the Boards of Appeal of EUIPO assigned the case, now registered under the reference number R 1252/2015-1, to the First Board of Appeal.

17 By decision of 3 September 2015 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division in so far as it had rejected the opposition based on Article 8(1)(b) and (5) of Regulation No 207/2009.

18 In the first place, the Board of Appeal found that proof of use had been furnished only in respect of the earlier mark Outils WOLF, reproduced in paragraph 6 above and registered under the numbers 1480873 and 352868. It found, in the light of the evidence provided, first, that that mark could be regarded as registered, for the purposes of its decision, in respect of all the goods in Class 7 specified in those registrations with the exception of ‘motors and engines (except...