Judgments nº T-695/15 of Tribunal General de la Unión Europea, October 03, 2017

Resolution DateOctober 03, 2017
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-695/15

(Community design - Invalidity proceedings - Registered Community design representing a container for sweets - Earlier international three-dimensional mark - Shape of a standard container which can be filled with sweets - Likelihood of confusion - Application of national law - Article 25(1)(e) of Regulation (EC) No 6/2002 - Article 62 and Article 63(1) of Regulation No 6/2002) In Case T-695/15,

BMB sp. z o.o., established in Grójec (Poland), represented by K. Czubkowski, lawyer,

applicant,

v

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

defendant,

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

Ferrero SpA, established in Alba (Italy), represented by M. Kefferpütz, lawyer,

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 8 September 2015 (Case R 1150/2012-3), relating to invalidity proceedings between Ferrero and BMB,

THE GENERAL COURT (First Chamber),

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

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 24 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 2 May 2016,

having regard to the response of the intervener lodged at the Court Registry on 29 April 2016,

further to the hearing on 28 March 2017,

gives the following

Judgment

Background to the dispute

1 The applicant, BMB sp. z o. o., is the right holder of the Community design filed on 15 November 2007 and registered on the same day under No 826 680-0001 with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

2 The contested design in respect of which registration was sought is for comfit boxes and containers in Class 09.03 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and was published in Community Design Bulletin No 2007/191 of 14 December 2007. It is represented as follows:

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3 On 11 July 2011, the intervener, Ferrero SpA, filed an application for a declaration of invalidity of the contested design before EUIPO pursuant to Article 25(1)(c) to (g) of Regulation No 6/2002.

4 In support of its application, the intervener invoked three earlier rights, including International Registration No 405 177 of a three-dimensional trade mark, registered on 12 March 1974, with effect in, in particular, France. The registration is protected for goods in Class 30 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, including for ‘sweets’, and is reproduced below:

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5 By decision of 25 April 2012, the Cancellation Division granted the application for a declaration of invalidity under Article 25(1)(e) of Regulation No 6/2002 on the basis of the international registration referred to above. It considered, in essence, that, on account of the similarity of the signs and the identity of the goods, there was a likelihood of confusion on the part of the relevant public.

6 On 21 June 2012, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the Cancellation Division’s decision.

7 On 26 August 2012, the applicant submitted a written statement setting out the grounds of that appeal.

8 By decision of 8 September 2015 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal and upheld the invalidity of the contested design pursuant to Article 25(1)(e) of Regulation No 6/2002.

9 The Board of Appeal held that the distinctive character per se of the earlier international registration was ‘below average’, since it ‘shows a standard container which can be filled with different products, such as sweets’. However, it held, in essence, that, on account of the high visual similarity of the signs at issue, which are not offset by phonetic and conceptual differences, and of the fact that the goods in question have at least a high degree of similarity, there was a likelihood of confusion on the part of the relevant public.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

11 EUIPO and the intervener contend that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

12 In support of its action, the applicant raises, in essence, three pleas in law.

13 By its first plea, alleging infringement of Article 62 of Regulation No 6/2002, the applicant argues that the Board of Appeal founded its decision on an incorrect legal basis.

14 The second plea alleges infringement of Article 25(1)(e) of Regulation No 6/2002, by which the applicant claims that the Board of Appeal erred when it found that there was a likelihood of confusion.

15 By its third plea, alleging infringement of Article 63(1) of Regulation No 6/2002, the applicant argues that the Board of Appeal failed to have regard for evidence it should have taken into account for the purpose of ruling on the appeal, which led it to commit errors in its assessment of the likelihood of confusion.

16 The arguments raised in the second and third pleas overlap substantially and the Court considers that they should be examined together.

17 During the hearing of 28 March 2017, the Court questioned the parties on the content and the application of Article L713-3 of the French code de la propriété intellectuelle (Intellectual Property Code) and on the possible relevance of judgment No 2008/10106 of 6 November 2009 of the Third Chamber of the tribunal de grande instance de Paris (Paris Regional Court) (France). The parties expressed their views in that regard during the hearing and, at EUIPO’s request, in written observations following the hearing and admitted by the Court.

The first plea in law, alleging an incorrect legal basis

18 In its first plea in law, the applicant argues that the Board of Appeal founded its decision on an incorrect legal basis, inasmuch as it was based on Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and not on Article L713-3 of the French Intellectual Property Code, which is the applicable provision in this case. It claims that the application of that regulation infringes the duty to state reasons under Article 62 of Regulation No 6/2002.

19 EUIPO contends that the Board of Appeal assessed the facts of the case in the light of Article L713-3 of the French Intellectual Property Code. It concedes that the sole reference to Article 8(1)(b) of Regulation No 207/2009 in the contested decision is a formal error, but disputes that it is a justification for the annulment of that decision. According to EUIPO, the applicant has not, in any event, claimed that the incorrect reference had a decisive effect on the resolution of the dispute, which renders its plea ineffective and insufficient to justify the annulment of the contested decision.

20 In the present case, it is clear that the first plea must be interpreted by the Court as alleging an incorrect legal basis and not an infringement of the duty to state reasons.

21 The grounds for declaring a Community design invalid are set out exhaustively in Article 25 of Regulation No 6/2002. Article 25(1)(e) of that regulation provides that a design may be declared invalid if it is used in a subsequent design and EU law or the law of the Member State concerned governing that sign confers on the right holder the right to prohibit such use.

22 It follows that the correct legal basis for the purpose of giving judgment on the application for a declaration of invalidity filed by the intervener on the basis of the earlier international registration was Article L713-3 of the French Intellectual Property Code, which confers on that intervener, as the right holder of an international registration designating France, the right to prohibit the use of the contested design.

23 In the present case, the Board of Appeal did in fact apply Article L713-3 of the French Intellectual Property Code and referred to it in paragraphs 11, 16 and 17 of the contested decision. Indeed, in paragraphs 16 and 17 of the contested decision, the Board of Appeal began its assessment by citing that provision, which confers upon the right holder of an international registration the right to prohibit the use of the contested design in France pursuant to Article 25(1)(e) of Regulation No 6/2002. The Board of Appeal observed that Article L713-3 of the French Intellectual Property Code provides that the imitation of a mark and the use of an imitated mark, in respect of identical or similar goods or services to those designated in the registration, are prohibited, unless the right holder authorises such use, if the use of that mark could lead to a likelihood of confusion on the part of the public.

24 In that regard, Article L713-3 of the French Intellectual Property Code transposes the provisions of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which, at the time the contested decision was adopted, had been replaced by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25). As rightly noted by EUIPO, it therefore suffices to interpret the likelihood of confusion in...

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