Judgments nº T-262/16 of The General Court, May 05, 2017

Resolution DateMay 05, 2017
Issuing OrganizationThe General Court
Decision NumberT-262/16

(EU trade mark - Opposition proceedings - Application for EU word mark GLOBO MEDIA - Earlier national figurative mark TV GLOBO PORTUGAL - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-262/16,

Globo Media, SA, established in Madrid (Spain), represented by L. Estropá Navarro and J. Calderón Chavero, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and B. Uriarte Valiente, acting as Agents,

defendant,

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

Globo Comunicação e Participações S/A, established in Rio de Janeiro (Brazil),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 March 2016 (Case R 0561/2014-4), relating to opposition proceedings between Globo Comunicação e Participações and Globo Media,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, M. Kancheva and J. Passer (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 23 May 2016,

having regard to the response lodged at the Court Registry on 10 November 2016,

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 16 March 2010, the applicant, Globo Media, SA, 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 The trade mark for which registration was sought is the word sign GLOBO MEDIA.

3 The goods and services for which registration was sought come within Classes 9, 16, 35, 38, 39 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 9: ‘Electronic publications (electronically-downloadable); records; compact discs (audio-video); optical disks; phonographic records; compacts discs; DVDs; magnetic tapes; cassettes; floppy disks and other recorded elements for the reproduction of sound or images; exposed films, in particular video films; editing appliances for cinematographic films; apparatus and carriers for recording, processing, transmission and reproduction of data, sound or images’;

- Class 16: ‘Publications; books; magazines; paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks’;

- Class 35: ‘Advertisement services; publicity agencies; radio and television advertising; rental of advertising space; rental of advertising material; dissemination of advertisements; advertising promotions; organisation of exhibitions for commercial and publicity purposes; publication of publicity texts; business management; business administration’;

- Class 38: ‘Broadcasting of radio and television programmes; radio broadcasting services; cable television broadcasting; satellite transmission; press information services; news agencies; telecommunications services’;

- Class 39: ‘Distribution, transport and storage of all kinds of audiovisual goods’;

- Class 41: ‘Production of radio and television programmes; organisation of shows (theatrical booking agencies); production of shows; screenplay editing; entertainer services; news reporter services; recording studio services; record publishing; show scenery (rental of); rental of theatre or television studio lighting apparatus; rental of audio equipment; rental of movie projectors and accessories; music competition services; orchestra services; entertainment services; publication of texts (other than publicity texts); educational, training and teaching services’.

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2010/069 of 19 April 2010.

5 On 19 July 2010, Globo Comunicação e Participações S/A filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

6 The opposition was based on, inter alia, the earlier Portuguese figurative mark reproduced below, which was registered on 31 January 2008 under number 422855 and applied for on 22 October 2007 in respect of, inter alia, the services covered by Class 41: ‘Television production, television programmes, information programmes and info shows; entertainment; entertainment shows for television, including television series and programmes, particularly in the area of news, series, sports and variety shows’:

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7 On 19 December 2013, the Opposition Division partially upheld the opposition, refusing to register the mark applied for in respect of certain services covered by Class 35 and of the services covered by Classes 38 and 41 on the ground that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of those services.

8 On 18 February 2014, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, in so far as that decision had partially upheld the opposition and refused the application for registration in respect of certain services in Class 35 and of the services in Classes 38 and 41.

9 By decision of 14 March 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it took the view that the services relevant to the present application were at least similar to those protected by the earlier trade mark and that the signs at issue were visually similar to a low degree, phonetically similar to a medium degree and conceptually similar to a high degree. It accordingly concluded that there was likelihood of confusion in respect of the services in question, even for the relevant public with a high level of attention.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- reject the opposition and grant registration of the contested mark in respect of the relevant services;

- order EUIPO to pay the costs.

11 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

Whether the request that registration of the mark be granted is admissible

12 The applicant’s second head of claim must be construed as requesting, first, that the Court reject the opposition brought by Globo Comunicação e Participações and, second, that it grant registration of the contested mark in respect of the relevant services.

13 In this regard, it follows from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, EUIPO is required, pursuant to Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the Courts of the European Union. It is therefore not for the General Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see, by analogy, judgment of 11 July 2007, El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, EU:T:2007:219, paragraph 20 and the case-law cited).

14 The applicant’s second head of claim must therefore be rejected as inadmissible in so far as it requests the Court to grant the application for registration of the contested trade mark.

Substance

15 In support of its action for annulment, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means, inter alia, trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios...

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