Judgments nº T-223/16 of Tribunal General de la Unión Europea, July 14, 2017

• Resolution Date: July 14, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-223/16

(EU trade mark - Opposition proceedings - Application for the EU figurative mark DriCloud - Earlier international word marks ICLOUD - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 - Submission of evidence out of time - Article 76(2) of Regulation No 207/2009) In Case T-223/16,

Massive Bionics, SL, established in Madrid (Spain), represented by M. Galindo Martens, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,

defendant,

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

Apple Inc., established in Cupertino, California (United States), represented by J. Olsen, P. Andreottola, Solicitors, and G. Tritton, Barrister,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 3 March 2016 (Case R 339/2015-5), relating to opposition proceedings between Apple and Massive Bionics,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 5 May 2016,

having regard to the response of EUIPO lodged at the Court Registry on 14 October 2016,

having regard to the response of the intervener lodged at the Court Registry on 21 October 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 April 2013, the applicant, Massive Bionics, SL, 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 following figurative sign:

3 The services in respect of which registration was sought are in Classes 35, 42 and 44 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 35: ‘Advertising; Business management; Business administration; Office functions; Procurement services for others (purchasing goods and services for other businesses); Updating of advertising material; Import-export agencies; Commercial information agencies; Publicity agencies; Rental of vending machines; Rental of advertising space; Rental of photocopying machines; Office machines and equipment rental; Publicity material rental; Rental of advertising time on communication media; Cost price analysis; Advisory services for business management; Business management assistance; Business auditing; Data search in computer files for others; Marketing research; Sponsorship search; Business research; Commercial or industrial management assistance; Price comparison services; Compilation of information into computer databases; Layout services for advertising purposes; News clipping services; Business management consultancy; Personnel management consultancy; Business organization consultancy; Business management and organization consultancy; Professional business consultancy; Accounting; Telephone answering for unavailable subscribers; Publicity columns preparation; Tax preparation; Shop window dressing; Demonstration of goods; Dissemination of advertising matter; Distribution of samples; Relocation services for businesses; Drawing up of statements of accounts; Marketing studies; Outsourcing services (business assistance); Invoicing; Organization of trade fairs for commercial or advertising purposes; Business management of hotels; Commercial administration of the licensing of the goods and services of others; Computerized file management; Business management of performing artists; Business inquiries; Business information; Commercial information and advice for consumers (consumer advice shop); Business investigations; Marketing; Typing; Modelling for advertising or sales promotion; Payroll preparation; Employment agencies; Organization of fashion shows for promotional purposes; Organization of exhibitions for commercial or advertising purposes; Arranging newspaper subscriptions for others; Psychological testing for the selection of personnel; Presentation of goods on communication media, for retail purposes; Economic forecasting; Production of advertising films; Sales promotion for others; Publication of publicity texts; Advertising; On-line advertising on a computer network; Bill-posting; Direct mail advertising; Advertising by mail order; Radio advertising; Television advertising; Compilation of statistics; Writing of publicity texts; Public relations; Document reproduction; Secretarial services; Personnel recruitment; Business efficiency expert services; Photocopying services; Business management of sports people; Telemarketing services; Systemization of information into computer databases; Opinion polling; Arranging subscriptions to telecommunication services for others; Shorthand; Administrative processing of purchase orders; Transcription; Word processing; Business appraisals; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Auctioneering’;

- Class 42: ‘Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Updating of computer software; Hosting computer sites (web sites); Computer rental; Rental of web servers; Rental of computer software; Computer system analysis; Water analysis; Analysis for oil-field exploitation; Chemical analysis; Computer virus protection services; Architecture; Information technology (IT) consulting services; Energy auditing; Authenticating works of art; Calibration (measuring); Construction drafting; Consultancy in the field of energy-saving; Architectural consultation; Web site design consultancy; Consultancy in the design and development of computer hardware; Computer software consultancy; Monitoring of computer systems by remote access; Quality control; Oil-well testing; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data (not physical conversion); Creating and maintaining web sites for others; Design of interior decor; Digitization of documents (scanning); Packaging design; Graphic arts design; Dress designing; Computer system design; Computer software design; Industrial design; Duplication of computer programs; Material testing; Textile testing; Clinical trials; Styling (industrial design); Technical project studies; Quality evaluation of wool; Quality valuation of standing timber; Underwater exploration; Server hosting; Weather forecasting; Engineering; Vehicle roadworthiness testing; Installation of computer software; Bacteriological research; Biological research; Scientific research; Cosmetic research; Physics (research); Research in the field of environmental protection; Mechanical research; Geological research; Chemical research; Technical research; Research and development of new products for others; Land surveys; Maintenance of computer software; Oil-field surveys; Geological surveys; Surveying; Urban planning; Computer programming; Geological prospecting; Oil prospecting; Providing search engines for the internet; Chemistry services; Recovery of computer data; Handwriting analysis (graphology); Provision of scientific information, advice and consultancy in relation to carbon offsetting; Scientific laboratory services; Cloud seeding; Software as a service (SaaS)’;

- Class 44: ‘Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services; Farming equipment rental; Medical equipment rental; Rental of sanitation facilities; Pet grooming; Aromatherapy services; Flower arranging; Pharmacy advice; Health counseling; Medical assistance; Veterinary assistance; Blood bank services; Public baths for hygiene purposes; Turkish baths; Rest homes; Health centers; Tree surgery; Plastic surgery; Medical clinic services; Wreath making; Animal breeding; Animal grooming; Landscape design; Vermin exterminating for agriculture, horticulture and forestry; Weed killing; Nursing, medical; Pharmacists’ services to make up prescriptions; In vitro fertilization services; Physiotherapy; Horticulture; Hospices; Hospitals; Hair implantation; Artificial insemination services; Gardening; Landscape gardening; Manicuring; Lawn care; Massage; Dentistry; Midwife services; Hairdressing salons; Tree planting for carbon offsetting purposes; Services of a psychologist; Aerial and surface spreading of fertilizers and other agricultural chemicals; Chiropractics; Rehabilitation for substance abuse patients; Nursing homes; Beauty salons; Health care; Sanatoriums; Sauna services; Aquaculture services; Alternative medicine services; Opticians’ services; Speech therapy services; Solarium services; Health spa services; Tattooing; Telemedicine services; Therapy services; Visagists’ services; Plant nurseries’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2013/082 of 2 May 2013.

5 On 1 August 2013, the intervener, Apple Inc., 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 services referred to in paragraph 3 above.

6 The opposition was based on the following earlier rights:

- international registration No 970388, designating...