Judgments nº T-541/15 of Tribunal General de la Unión Europea, June 20, 2017

• Resolution Date: June 20, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-541/15

(EU trade mark - Opposition proceedings - Application for EU word mark NSU - Earlier national word mark NSU - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 - Genuine use of the earlier mark - Article 42(2) and (3) of Regulation No 207/2009) In Case T-541/15,

Industrie Aeronautiche Reggiane Srl, established in Reggio Emilia (Italy), represented by M. Gurrado, lawyer,

applicant,

v

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

defendant,

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

Audi AG, established in Ingolstadt (Germany),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 July 2015 (Case R 2132/2014-2), relating to opposition proceedings between Audi and Industrie Aeronautiche Reggiane,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise and K. Kowalik-Bańczyk (Rapporteur), Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 17 September 2015,

having regard to the response lodged at the Court Registry on 15 December 2015,

further to the hearing on 9 March 2017,

gives the following

Judgment

Background to the dispute

1 On 13 December 2010, the applicant, Industrie Aeronautiche Reggiane Srl, 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 Registration as a mark was sought for the word sign NSU.

3 The goods in respect of which registration was sought are in, inter alia, following the restriction made during the proceedings before EUIPO, Class 12 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: ‘Automobiles; Motorcycles, namely two-wheeled vehicles with combustion engines and a cylinder capacity exceeding 125cc, if heat engines; all-terrain vehicles’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 240/2010 of 22 December 2010.

5 On 21 March 2011, Audi AG 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 in Class 12 initially covered by the trade mark application.

6 The opposition was based on the earlier word mark NSU, registered in Germany on 14 December 1918 under No 228036 for goods in Classes 7, 8 and 12 and corresponding, for each of those classes, to the following description:

- Class 7: ‘Machines, parts of machines’;

- Class 8: ‘Tools’;

- Class 12: ‘Land vehicles, air vehicles and water vehicles, automobiles, bicycles, accessories for automobiles and bicycles, parts of vehicles’.

7 The grounds relied upon in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009.

8 On 17 September 2013, at the request of the applicant, the opponent was invited by EUIPO to adduce evidence, in accordance with Article 42(2) and (3) of Regulation No 207/2009, that the earlier trade mark had been put to genuine use, in the five years preceding the publication of the EU trade mark application, in the Member State in which that mark was protected.

9 On 18 November 2013, the opponent produced evidence of use of the earlier trade mark. Among that evidence was, inter alia:

- a free licence agreement, dated 1985, between the opponent and its subsidiary, NSU GmbH, a company established in Neckarsulm (Germany), authorising the latter to make use of the trade mark NSU and of trade marks linked to it, accompanied by extracts from the commercial register of that subsidiary, extracts from its annual reports from between 2005 and 2015, examples of sales invoices for spare parts issued in 2005 and 2010 and the affidavit by M. T., managing director of that subsidiary between 1996 and 2012;

- printouts of screenshots from the website ‘trshop.audi.de’, one of which was dated 22 January 2010 and a number of others which were dated 12 November 2013;

- a licence agreement entered into between NSU and Zweirad-Einkaufs-Genossenschaft eG (‘ZEG’), a company established in Cologne (Germany), dated May 1996 and granting a licence in respect of the trade mark NSU and of trade marks linked to it for the production and distribution of bicycles, as well as various pieces of evidence relating to that agreement, namely printouts of screenshots from the online shop ‘www.ZEG.com’ and statements of ZEG’s royalty payments evidencing the production and sale, in accordance with that agreement, of several thousand bicycles during the years 2005 to 2010;

- a licence agreement entered into between NSU and NSU Quickly Ersatzteile, a company established in Friesenheim (Germany), dated July 2005, authorising the use of the trade mark NSU and of trade marks linked to it in order to ensure the supply of vehicles and spare parts bearing the trade mark NSU to interested consumers, as well as printouts of screenshots from the website ‘www.nsu-quickly.de’ showing the offer for sale of spare parts for NSU Quickly motorcycles, dated 12 November 2013;

- a licence agreement with Bucholtz, a company established in Vöhringen (Germany), dated August 2003, authorising the use of the trade mark NSU and of trade marks linked to it in order to ensure the supply of vehicles and spare parts bearing the trade mark NSU to interested consumers, as well as printouts of screenshots from the website ‘www.nsu-ro80.de’, belonging to that company, showing the offer for sale of, inter alia, vehicle parts and accessories for the NSU model Ro80 automobiles, dated 12 November 2013;

- a licence agreement with RoTECH Rotationskolbentechnik, a company established in Bad Soden (Germany), dated October 1990, authorising the provision of repair and restoration services in Germany for a number of types of rotary piston engines used in certain models of NSU automobiles, as well as the distribution and the sale of those motors worldwide.

10 By decision of 20 June 2014, the Opposition Division upheld the opposition in part and refused registration of the mark applied for in relation to certain goods in Class 12, initially covered by the trade mark application, and rejected the opposition for the remainder.

11 On 18 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, in so far as it upheld the opposition in part.

12 On 16 October 2014, the applicant applied to the Board of Appeal of EUIPO to restrict the list of goods in Class 12 covered by the trade mark application and restricted those goods to those referred to in paragraph 3 above.

13 On 30 January 2015, the opponent submitted its observations and requested, pursuant to Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), that the Opposition Division’s decision be annulled with regard to the goods in Class 12 for which the opposition had been rejected.

14 By decision of 6 July 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the opponent’s ancillary appeal and dismissed the applicant’s primary appeal.

15 As regards the proof of genuine use of the earlier mark, the Board of Appeal found, in paragraphs 74 to 91 of the contested decision, that such use had been shown not only for ‘bicycles’ in Class 12, as had been found by the Opposition Division, but also for ‘parts of machines’ in Class 7 and for ‘accessories for automobiles and bicycles, parts of vehicles’ in Class 12. By contrast, the Board of Appeal stated that genuine use had not been proven by the opponent for ‘machines’ in Class 7 and ‘tools’ in Class 8. As regards the goods in Class 12, the Board of Appeal took the view that the evidence did not show genuine use of the earlier mark for ‘air vehicles and water vehicles’ and was very limited with regard to ‘land vehicles’ and ‘automobiles’.

16 As regards the likelihood of confusion, the Board of Appeal took the view, in paragraphs 97 to 116 of the contested decision, that the relevant public comprised both the general public, which has a slightly higher than average degree of attentiveness, and a specialised public, which has a high degree of attentiveness, in Germany. It found that the signs at issue were identical and that ‘parts of...