Judgments nº T-457/15 of Tribunal General de la Unión Europea, June 15, 2017

• Resolution Date: June 15, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-457/15

(EU trade mark - Opposition proceedings - Application for EU figurative mark climaVera - Earlier EU word mark CLIMAVER DECO - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-457/15,

Fakro sp. z o.o., established in Nowy Sącz (Poland), represented by J. Radłowski, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

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

Saint Gobain Cristalería, SL, established in Madrid (Spain), represented by E. Bayo de Gispert, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 12 May 2015 (Case R 2095/2014-2), relating to opposition proceedings between Saint Gobain Cristalería and Fakro,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis, President, D. Spielmann (Rapporteur) and Z. Csehi, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 11 August 2015,

having regard to the response of EUIPO lodged at the Court Registry on 13 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 28 December 2015,

having regard to the reassignment of the case to the Ninth Chamber and to a new Judge-Rapporteur,

having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Sixth Chamber,

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 28 January 2013, the applicant, Fakro sp. z o.o., filed an application for registration of an EU trade mark with 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 following figurative sign:

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 6, 19, 20, 24 and 37 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 6: ‘Shutters of metal, jalousies of metal’;

- Class 19: ‘Jalousies, not of metal and not of textile’;

- Class 20: ‘Blinds and indoor curtains, not of metal’;

- Class 24: ‘Curtains of plastic or textile’;

- Class 37: ‘Assembly of jalousies, blinds, awnings and curtains’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 93/2013 of 21 May 2013.

5 On 20 August 2013, the intervener, Saint Gobain Cristalería, SL, 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 earlier EU word mark CLIMAVER DECO, filed on 27 March 2009, designating goods in Classes 11, 17 and 19 and corresponding, for each of those classes, to the following description:

- Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’;

- Class 17: ‘Insulating, thermal and acoustic materials’;

- Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 in respect of all the goods covered by the earlier trade mark and the mark applied for.

8 By decision of 19 June 2014, the Opposition Division partly upheld the opposition, holding that there was a likelihood of confusion between the mark applied for and the earlier trade mark. Making reference to Communication No 2/12 of the President of EUIPO of 20 June 2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 7/2012), the Opposition Division considered that the earlier trade mark was registered in respect of all the goods covered by Class Headings 11 and 19 of the Nice Classification. In particular, it upheld the opposition and refused the application for registration in respect of the ‘shutters of metal’ and the ‘jalousies of metal’ in Class 6 and the ‘jalousies, not of metal and not of textile’ in Class 19. It also refused the application for registration in respect of the ‘blinds and indoor curtains, not of metal’ in Class 20 and the ‘curtains of plastic or textile’ in Class 24. Lastly, the Opposition Division refused the application for registration in respect of the ‘assembly of jalousies, blinds, awnings and curtains’ in Class 37. It considered that there was a likelihood of confusion in respect of the goods and services held to be identical or similar to those covered by the earlier trade mark.

9 On 13 August 2014, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision.

10 By decision of 12 May 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the ground that there was a likelihood of confusion in the case at hand. To that end, it considered that the goods and services were directed at both professionals and the general public and that the average consumer displayed a high level of attention when purchasing the goods and services in question. The Board of Appeal considered that the goods and services concerned were either identical or similar to the goods covered by the earlier trade mark. Regarding the comparison of the marks, it held that, visually, the elements ‘climavera’ and ‘climaver’ of the respective signs were the most dominant and eye-catching. Phonetically, it held that the pronunciation of the signs in question coincided with regard to the letters ‘c’, ‘l’, ‘i’, ‘m’, ‘a’, ‘v’, ‘e’, and ‘r’, which appeared in the same order in both signs. Lastly, conceptually, the Board of Appeal stated that the signs in question, despite some differences, could be perceived as similar by a part of the relevant public as they shared the element ‘clima’, understood by a substantial part of the relevant public as referring to the climate. The Board of Appeal concluded that there was a risk that the relevant public might be led to believe that the goods and services designated by the signs in question come from the same undertaking or from economically linked undertakings.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision and refer the case back to EUIPO for further consideration;

- order EUIPO to pay the costs.

12 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- confirm the contested decision;

- order the applicant to pay the costs.

Law

13 In its single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant argues that the Board of Appeal erred in its assessment of the similarity of both the goods and the signs, which affected its conclusion that there was a likelihood of confusion in the present case.

14 EUIPO and the intervener dispute the applicant’s arguments.

15 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 must not 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.

16 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or 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 RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

Relevant public

17 The Board of Appeal held that the goods and services in question were directed at consumers in the area of home maintenance, improvement and renovation - both professionals and the general public, namely DIY amateurs. In addition, it held that it was necessary to take into consideration the level of attention of consumers forming part of the general public. In that regard, it considered that, for a large part of the goods in question, the average consumer would display a high level of attention when purchasing those goods, in view of - inter alia - the fact that they were goods that the average consumer did not purchase on a daily basis.

18 The applicant disputes that definition and argues that some of the services concerned, such as the installation of metal blinds on the outside of a window or the installation of electric blinds, require a significant level of professionalism. Accordingly, it is necessary in the...