Judgments nº T-586/15 of Tribunal General de la Unión Europea, September 22, 2017

• Resolution Date: September 22, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-586/15

(EU trade mark - Opposition proceedings - Application for the EU figurative mark NaraMaxx - Earlier national word mark MAXX - Relative ground for refusal - No likelihood of confusion - No similarity between the signs - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-586/15,

Nara Tekstil Sanayi Ve Ticaret Anonim Sirketi, established in Osmangazi-Bursa (Turkey), represented by M. López Camba and L. Monzón de la Flor, lawyers,

applicant,

v

European Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

defendant,

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

NBC Fourth Realty Corp., established in North Las Vegas, Nevada (United States), represented initially by D. Stone and A. Dykes, and subsequently by A. Smith, Solicitors, and S. Malynicz QC,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 July 2015 (Case R 1073/2014-4), relating to opposition proceedings between NBC Fourth Realty and Nara Tekstil Sanayi Ve Ticaret,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 8 October 2015,

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

having regard to the response of the intervener lodged at the Court Registry on 6 January 2016,

further to the hearing on 30 May 2017,

gives the following

Judgment

Background to the dispute

1 On 27 August 2012, the applicant, Nara Tekstil Sanayi Ve Ticaret Anonim Sirketi, 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 and services in respect of which registration of the mark was sought are in, inter alia, Classes 18, 25 and 35 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 imitation leather, animal skins; animal hides, artificial leathers, stout leathers, lining leather; goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel; make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, tool bags sold empty; book bags; carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes; umbrellas, sun umbrellas, namely, parasols and canes; whips, harnesses and saddlery, stirrups, horse bridles’;

- Class 25: ‘Clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pyjamas, pullovers, jeans, tracksuits, rainwear, beachwear, bathing suits, swimming suits; clothing for sports (for exclusive use for sports); clothing for babies, namely, shirts, pants, coats, dresses; underclothing, namely, boxer shorts, brassieres, briefs, pants, socks; footwear, namely, shoes (excluding orthopedic shoes), sandals, waterproof boots, walking boots, booties, sporting shoes, slippers; shoe parts, namely, heelpieces, insoles for footwear, footwear uppers; headgear, namely caps, skull caps, sports caps, hats, berets; gloves (clothing); stockings; belts (clothing); camisoles, sarongs, scarves, neck scarves, shawls, collars, neckties, ties, suspender belts’;

- Class 35: ‘Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of leather and imitations of leather, and goods made of these materials; clothing, footwear, headgear’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2012/199 of 18 October 2012.

5 On 16 January 2013, the intervener, NBC Fourth Realty Corp., 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.

6 The opposition was based on the following earlier registered word marks owned by the intervener:

- the Bulgarian trade mark MAXX, filed on 8 December 2011 and registered on 19 November 2013, under number 121893, for the goods and services in the following classes:

- Class 18: ‘Goods of leather and imitations of leather, sports bags, shopping bags, beach bags, bags made of leather and shoulder bags included in this class; not fitted cosmetic bags; handbags, wallets; backpacks; trunks [luggage]; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddler’;

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

- Class 35: ‘Advertising; business management; business administration; office functions; retail services in the fields of cleaning preparations, body lotions, bath lotions, soaps, cosmetics, toilet waters, eau de Cologne, perfumes, cosmetic kits with make-up, jewellery, watches, paper goods and printed matter, stationery, bags, handbags, wallets, backpacks, trunks [luggage], umbrellas, furniture, household and kitchen goods, fabrics and textile goods, clothing, footwear, headgear, games and playthings, plush toys and animals; gymnastic and sporting articles, Christmas and Halloween decorations’.

- EU trade mark T.K. MAXX, registered on 22 February 2010, under number 8220964, for goods in Classes 3, 14, 16, 21, 25 and 28;

- EU trade mark T.K. MAXX, registered on 30 May 2009, under number 7088991, for goods and services in Classes 18, 24 and 35;

- EU trade mark HOME MAXX, registered on 17 April 2008, under number 5939038, for goods and services in Classes 21, 24 and 35.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009.

8 On 24 February 2014, the Opposition Division upheld the opposition, in so far as it was based on the earlier Bulgarian mark MAXX, in respect of all the goods and services referred to in the application for registration, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

9 On 21 April 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.

10 By decision of 27 July 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It noted that the parties had not disputed the Opposition Division’s finding to the effect that the goods and services covered by the mark applied for were in large part identical and, in part, similar to the goods and services covered by the earlier mark. In its view, the signs at issue had above-average visual and phonetic similarities and, since they had no conceptual meaning for Bulgarian consumers, their conceptual comparison was...