Judgments nº T-55/15 of Tribunal General de la Unión Europea, July 14, 2017

Resolution DateJuly 14, 2017
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-55/15

(EU trade mark - Opposition proceedings - International registration designating the European Union - Figurative mark CERTIFIED AUSTRALIAN ANGUS BEEF - Earlier well-known figurative and word marks SINCE 1978 CERTIFIED ANGUS BEEF BRAND and CERTIFIED ANGUS BEEF BRAND - Relative ground for refusal - No similarity between the signs - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-55/15,

Certified Angus Beef LLC, established in Wooster, Ohio (United States), represented by C. Aikens, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Fischer and A. Söder, acting as Agents,

defendant,

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

Certified Australian Angus Beef Pty Ltd, established in Surrey Hills (Australia),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 30 October 2014 (Case R 662/2014-4), relating to opposition proceedings between Certified Angus Beef and Certified Australian Angus Beef,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, E. Buttigieg and B. Berke (Rapporteur), Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 3 February 2015,

having regard to the response lodged at the Court Registry on 22 June 2015,

further to the hearing on 7 December 2016,

gives the following

Judgment

Background to the dispute

1 On 28 June 2011, Certified Australian Angus Beef Pty Ltd obtained an international registration designating the European Union 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:

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3 The goods and services in respect of which registration was sought are in Classes 29, 30 and 43 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 29: ‘Meat, meat extracts, preserved meat, processed meat products, sausages, pre-cooked meat products in this class, frozen meat products and all other meat products and products containing meat in this class; all of the aforementioned goods being derived from Angus Beef’;

- Class 30: ‘Pies, pastry products, pasties, dumplings, hot dog sandwiches, pastries, sausage rolls, savoury biscuits, sandwiches, burgers, rolls, all of the foregoing including those containing meat; preparations made from bread or pastry; sauces (condiments); spices; gravy’;

- Class 43: ‘Provision of food and drink; restaurant services; cafe services; catering services; provision of food and drink as part of hospitality services’.

4 On 10 August 2012, the applicant, Certified Angus Beef LLC, 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 and services referred to in paragraph 3 above.

5 The opposition was based, inter alia, on the following earlier rights:

- the figurative mark reproduced below, which is claimed to be well known, within the meaning of Article 8(2)(c) of Regulation No 207/2009, in all the Member States of the European Union, for, inter alia, the goods and services in Classes 29, 30 and 43 covered by the mark applied for and for ‘certification services, licensing services and quality control services in the field of meat and beef products’:

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- the word mark CERTIFIED ANGUS BEEF BRAND, which is claimed to be well known, within the meaning of Article 8(2)(c) of Regulation No 207/2009, in all the Member States of the European Union, for, inter alia, the goods and services in Classes 29, 30 and 43 covered by the mark applied for and for ‘certification services, licensing services and quality control services in the field of meat and beef products’.

6 The grounds relied on in support of the opposition were those set out in:

- Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(a) of that regulation;

- Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(c) of that regulation;

- Article 8(4) of Regulation No 207/2009;

- Article 8(5) of Regulation No 207/2009.

7 On 10 February 2014, the Opposition Division rejected the opposition.

8 On 5 March 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

9 By decision of 30 October 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the Opposition Division’s decision.

10 It found, in essence, that the signs at issue could not be regarded as similar, thus excluding the application of Article 8(1)(b) of Regulation No 207/2009.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- uphold the opposition;

- order EUIPO to pay the costs.

12 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

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

14 The applicant submits that the Board of Appeal should, at the stage of the comparison of the signs, have examined the distinctive character which its marks referred to in paragraph 5 above had acquired as a result of the reputation which they enjoy because they are well known. Furthermore, it maintains that the Board of Appeal was not entitled to conclude that the marks at issue coincided visually and phonetically only in non-distinctive elements, since it should have considered the possibility that the word element ‘certified angus beef’ had acquired distinctive characteras a result of the reputation which the earlier marks enjoy with the public because they are well known in the United Kingdom in relation to goods in Class 29, namely ‘meat derived from Angus beef’. According to the applicant, since the Opposition Division had acknowledged that the earlier figurative mark was well known in the United Kingdom, the Board of Appeal should also have acknowledged that the earlier figurative mark and the earlier word mark were well known in that State and, in addition, that both marks were well known in other Member States.

15 EUIPO disputes the applicant’s arguments.

16 Article 156(1) of Regulation No 207/2009 provides that international registrations designating the European Union are to be subject to opposition in the same way as published EU trade mark applications.

17 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, the 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)(c) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks which, on the date of application for registration are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.

18 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).

19 Since the applicant’s arguments are based exclusively on the non-registered earlier figurative and word marks referred to in paragraph 5 above, which it submits are well known in the United Kingdom and in other Member States, it must be held that only the parts of the contested decision regarding the distinctive character of those marks and the elements of which they consist are disputed.

20 In the first place, the applicant submits that the Board of Appeal should have taken account, at the stage of the comparison of the signs, of the fact that the word element ‘certified angus beef’ in those earlier marks had acquired distinctive character because the marks are well known. According to the applicant, by failing to consider that possibility, the Board of Appeal erroneously found that the marks at issue were dissimilar on the ground that they coincided only in elements which were entirely non-distinctive.

21 In that regard, the Board of Appeal found that, if the earlier mark had any distinctive character at all, it lay in the overall impression created by that mark and not in any of the individual elements as such. Furthermore, it found that the earlier word mark coincided with the mark applied for only in elements which were descriptive or non-distinctive.

22 It is necessary to differentiate between the distinctive character of an earlier mark and the distinctive character of its elements. Where a mark has distinctive character, that distinctive character must be ascribed to the mark as a whole and not automatically to all the elements of which it is composed (see, to that effect...

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