Judgments nº T-521/15 of Tribunal General de la Unión Europea, July 20, 2017

• Resolution Date: July 20, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-521/15

(EU trade mark - Opposition proceedings - Application for an EU figurative mark representing a curved and angled line - Earlier EU figurative mark representing a capital letter ‘D’ - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-521/15,

Diesel SpA, established in Breganze (Italy), represented by A. Gaul, M. Frank, A. Parassina and K. Dani, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and A. Folliard-Monguiral, acting as Agents,

defendant,

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

Sprinter megacentros del deporte, SL, established in Elche (Spain), represented by S. Malynicz QC,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 18 June 2015 (Case R 3291/2014-2), relating to opposition proceedings between Diesel and Sprinter megacentros del deporte,

THE GENERAL COURT (Sixth Chamber),

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

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 7 September 2015,

Having regard to the response of EUIPO lodged at the Court Registry on 9 December 2015,

having regard to the response of the intervener lodged at the Court Registry on 21 December 2015,

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

further to the hearing on 26 April 2017,

gives the following

Judgment

Background to the dispute

1 On 6 December 2012, the intervener, Sprinter megacentros del deporte, 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 goods in respect of which registration was sought are in Classes 18, 25 and 28 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 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, tote bags, bottle bags, record bags, book bags; handbags; sports bags; sports holdalls; shopping bags; luggage and suitcases; weekend bags; jewellery rolls; attaché cases and briefcases; parts and fittings for all the aforesaid goods’;

- Class 25: ‘Clothing; football boots; rugby boots; training shoes; running shoes; tennis shoes; indoor sports shoes; headgear; belts’;

- Class 28: ‘Gymnastic and sporting articles and equipment; games and playthings; parts and fittings for all the aforesaid goods’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 5/2013 of 8 January 2013.

5 On 5 April 2013, the applicant, Diesel SpA, 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, inter alia, the earlier EU figurative mark reproduced below, which was registered on 19 February 1999 under the number 000583708 :

7 The goods covered by the earlier mark were in, inter alia, Classes 18 and 25 and corresponded, for each of those classes, to the following description:

- Class 18: ‘Leather and imitation of leather and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks, whips, harness and saddlery’;

- Class 25: ‘Clothing, footwear, headgear’.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

9 On 31 October 2014, the Opposition Division rejected the opposition.

10 On 29 December 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.

11 By decision of 18 June 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, after finding that the relevant public consisted of the general public in the European Union, the level of attention of which was average, it upheld the Opposition Division’s decision, pointing out that:

- whereas the earlier mark clearly resembled a capital letter ‘D’, the mark applied for represented, rather, a basic geometrical shape; although it could not be completely excluded that a small part of the public might perceive the mark applied for as a capital letter ‘D’, that possibility seemed, however, unlikely;

- from a visual standpoint, the marks at issue have clear visual differences that outweigh the similarities, which, in the overall visual impression, are not particularly strong; they are phonetically and conceptually identical, but only in the unlikely event that part of the relevant public perceives the contested sign as the graphic representation of a capital letter ‘D’, whereas, for the remaining public, the phonetic and conceptual comparison is not relevant or impossible, respectively;

- the distinctive character of the earlier mark is weak in relation to the goods concerned in Classes 18 and 25;

- the fact that, for part of the relevant public, the marks at issue may be perceived as a capital letter ‘D’ and that they may have the concept of that letter in common is not sufficient to create a likelihood of confusion; even in that situation, the Board of Appeal must take care not to apportion excessive weight to a coincidence of features which are merely generic to the capital letter ‘D’ and must pay particular attention to the specific features which are not generic to the letter ‘D’; in the present case, the contested sign does not share any of the earlier sign’s specific features.

12 The Board of Appeal concluded that notwithstanding the principles of interdependence and of imperfect recollection on the part of the public, there was no reason to assume that the relevant public in the European Union would be misled into thinking that goods bearing the signs at issue, even if they were identical, came from the same undertaking or, as the case might be, from undertakings that were economically linked, even taking into account the normal level of attention of the relevant public. Consequently, it did not consider it necessary to examine and compare the goods or to determine whether the applicant had proved genuine use of the earlier mark, within the meaning of Article 42(2) of Regulation No 207/2009, following the request to that effect which the intervener had made before the Opposition Division.

Forms of order sought

13 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

14 EUIPO contends that the Court should:

- dismiss the action in its entirety;

- order the applicant to pay the costs.

15 The intervener contends that the Court should:

- uphold the contested decision;

- order the applicant to pay the costs of the intervener and to bear its own costs.

Law

The admissibility of certain annexes to the application

16 EUIPO submits that certain annexes to the application, namely Annexes I 3 et I 4, which were submitted for the first time before the Court and not in the course of the proceedings before EUIPO, must be declared inadmissible. Those annexes relate to samples, found on the internet, of the stylised capital letter ‘D’ used by the Walt Disney Company and of other capital letters ‘D’, which the applicant has produced to support the argument that the contested mark will be perceived by the relevant public as a representation of the capital letter ‘D’.

17 In that regard, it must be pointed out that those documents, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE), T-346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

The single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

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

19 It submits, in essence, that the Board of Appeal erred in finding that there was no likelihood of confusion between the marks at issue. In the first place, it maintains that, contrary to what the Board of Appeal stated, a significant part of the relevant public will perceive the sign applied for as a capital letter ‘D’. It takes the view that that sign consists of all the elements that are necessary to form a typical capital letter ‘D’. In the second place, the applicant submits that the signs are phonetically and conceptually identical and visually similar for a significant part of the relevant public. In particular, as regards the visual similarity, the applicant puts forward the argument that, even though there are differences between the marks at issue, those differences do not outweigh the elements which are...