Judgments nº T-224/16 of The General Court, May 05, 2017

• Resolution Date: May 05, 2017
• Issuing Organization: The General Court
• Decision Number: T-224/16

(EU trade mark - Opposition proceedings - EU figurative mark Out Door - Earlier EU word mark OUTDOOR PRO - Relative ground for refusal - Article 8(1)(b) of Regulation (EC) No 207/2009 - Article 76 of Regulation No 207/2009) In Case T-224/16,

Messe Friedrichshafen GmbH, established in Friedrichshafen (Germany), represented by W. Schulte Hemming, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Eberl and D. Hanf, acting as Agents,

defendant,

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

El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 February 2016 (Case R 2302/2011-2), relating to opposition proceedings between El Corte Inglés and Messe Friedrichshafen,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 May 2016,

having regard to the response of EUIPO lodged at the Court Registry on 21 September 2016,

having regard to the response of the intervener lodged at the Court Registry on 12 September 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 9 May 2008, the applicant, Messe Friedrichshafen GmbH, 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). Registration as a mark was sought for the following figurative sign:

2 The goods and services in respect of which registration was sought are in Classes 9, 16, 25, 28, 35, 37, 38, 41 to 43 and 45 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:

- Class 9: ‘Photographic, cinematographic, optical, electric, electrotechnical and electronic apparatus and equipment, included in class 9; data-processing equipment and computers; apparatus for recording, transmission or reproduction of sound or images; video, computer and other electronic games, included in class 9; electronically downloadable publications, music, ringtones, games, programs and film; game and amusement apparatus; parts of the aforesaid goods; computer game and video game cassettes, computer software, included in class 9; exposed films, recorded and unrecorded sound and/or image carriers (except unexposed films, in particular CDs, CD-ROMs, DVDs); magnetic data carriers; spectacles, sunglasses; spectacle cases, spectacle chains, spectacle cords, spectacle lenses and spectacle frames’;

- Class 16: ‘Paper, cardboard, goods of paper and cardboard, included in class 16; printed matter, newspapers and periodicals, books; catalogues, brochures, flyers; book ends, book sleeves; photographs, posters; stationery; postcards, greetings cards, trading cards, writing paper and envelopes, postage stamps, notebooks, diaries, note papers, notice boards, address books, writing sets (stationery), file covers and folders, calendars, ring binders, writing or drawing books, student planners, albums, collectors’ albums, paperweights, letter-openers, writing pads, desk organisers (containers for writing and office implements); rulers, rubber erasers, stapling presses, staples and paper clips, books and bookmarkers; transfers (including iron-on transfers and transfers for temporary tattoos), rub-on transfers, paper and PVC stickers, paper bags; gift paper, gift tags of paper and cardboard; party articles of paper and/or cardboard, namely paper streamers, flags, table decorations, table napkins, tablecloths, place mats; black boards and white boards, chalk, adhesives for stationery and household purposes, writing implements, marker pens, cases for writing, painting and drawing utensils, pencil cases filled with marker pens, fountain pens, ball-point pens, pencils, rulers, rubber erasers and notepaper; pencil cases and containers, pencil holders, pencil extenders, pencil-sharpeners, drawing, painting and modelling goods and apparatus, paintbrushes; artists’ materials, namely crayons, chalk, palettes and canvasses; hobby kits with painting materials; typewriters and office requisites (except furniture), included in class 16; roll dispensers for adhesive tape, instructional and teaching material (except apparatus) in the form of printed matter, games, globes, drawing implements for wall boards; printers’ type and printing blocks; stamps (seals), stamp inks and inking pads, ink’;

- Class 25: ‘Clothing, in particular T-shirts, jersey clothing; belts for clothing, braces, gloves; footwear; cap peaks, headbands (clothing); headgear (hats, caps); sun hats; knitwear, sweaters, waistcoats, jackets, polo shirts, shirts, scarves, neckerchiefs’;

- Class 28: ‘Game cards; games and playthings, electronic games (included in class 28); toy clocks (included in class 28); console games (included in class 28); automatic gaming machines, hand-held games apparatus, included in class 28; gymnastic and sporting articles, included in class 28; toy model cars, decorations for Christmas trees’;

- Class 35: ‘Advertising; advertising mail; business management services; business administration; office functions; distribution of leaflets and samples; newspaper subscription services for others; collating, systematic ordering and providing of information in business affairs and in the field of advertising (included in this class) by means of digital, multimedia and virtual information systems; bookkeeping; document reproduction services; employment services; file management; organization of exhibitions for commercial or advertising purposes; organisation consultancy, professional business consultancy; marketing, market research and market analysis; public relations; advertising for exhibitors; providing and rental of advertising and presentation space, including on the Internet (banner exchange) and other electronic media; rental of advertising material; renting out of advertising time in communication media; providing of addresses; providing of business and commercial contacts, including on the Internet; arranging of advertising and promotion contracts for others; arranging of contracts, for others, for the use of service agreements; mail advertising; dissemination of advertising matter; direct mail advertising (tracts, prospectuses, printed matter, samples); display services for merchandising; good and service presentations; arranging of advertisements; marketing communications, namely press publications, public relations, product advertising and image consultancy, for others; business management/arranging commercial transactions, for others; business and personnel management consultancy; business consultancy and advisory services; secretarial services; arranging and conducting of congresses, conferences, seminars and workshops, trade fairs and exhibitions for commercial and advertising purposes, including on the Internet and other electronic media; advertising and advertising agencies; advertising sponsorship; market research; organisational consultancy via hotlines; collating and systematic ordering of data, information, images and texts relating to business affairs and in the field of advertising, on computer databases; updating of business information and information in the field of advertising contained in digital, multimedia and virtual information systems; organisation of participation in exhibitions; presentation of companies and their products and services, including on the Internet and other electronic media; sales promotion and brokering of trade, service and business contacts and commercial transactions for consumer goods and industrial products on the Internet and other electronic media, including by means of a virtual trade fair; providing and rental of floor space and exhibition stands, including associated equipment (included in this class); advertising for exhibitors; arranging of advertising services; decoration of exhibition stands and platforms; secretarial services’;

- Class 37: ‘Construction and building of exhibition stands, stages and booths; electric installation, installation of sound and image production and reproduction systems; stand cleaning’;

- Class 38: ‘Telecommunications; press and information agencies; communication by computer terminals; television broadcasting, radio broadcasting, cable television broadcasting; message sending; satellite transmission; operating and rental of telecommunications equipment; electronic mail services; interactive online services, namely teleshopping channels; telecommunication routing and junction services; providing telecommunications connections to a global computer network; providing Internet access; provision of information on the Internet; providing portals on the Internet; providing platforms on the Internet; operating of chatlines, chatrooms and forums; videoconferencing; conferencing; computer-aided transmission of messages and images; news agencies and press reports; rental of message sending apparatus; forwarding of messages of all kinds to Internet addresses (web-messaging); telecommunications; transmission of data, information, images and texts on computer networks and other electronic media, including the Internet; technical transmission of information using...