Judgments nº T-120/16 of Tribunal General de la Unión Europea, December 06, 2017

• Resolution Date: December 06, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-120/16

(EU trade mark - Opposition proceedings - International registration designating the European Union - Figurative mark Burlington - Earlier national word marks BURLINGTON and BURLINGTON ARCADE - Earlier EU and national figurative marks BURLINGTON ARCADE - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Use in the course of trade of a sign of more than mere local significance - Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) - Unfair advantage taken of the distinctive character or the repute of the earlier trade marks - Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))

In Case T-120/16,

Tulliallan Burlington Ltd, established in St Helier (Jersey), represented by A. Norris, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Fischer, acting as Agent,

defendant,

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

Burlington Fashion GmbH, established in Schmallenberg (Germany), represented by A. Parr, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 11 January 2016 (Case R 94/2014-4), relating to opposition proceedings between Tulliallan Burlington and Burlington Fashion,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 22 March 2016,

having regard to the response of EUIPO lodged at the Court Registry on 10 June 2016,

having regard to the response of the intervener lodged at the Court Registry on 13 June 2016,

further to the hearing on 28 April 2017,

gives the following

Judgment

Background to the dispute

1 On 12 November 2009, the intervener, Burlington Fashion GmbH, filed an application for protection in the European Union of international registration No 1017273 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), as amended (replaced by 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)). The registration for which the protection was applied for is the figurative mark represented below:

2 The goods in respect of which the protection was applied for are in Classes 3, 14, 18 and 25 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 3: ‘Soaps for cosmetic purposes, soaps for textiles, perfumery, ethereal oils, cosmetic preparations for cleaning, caring for and embellishing the skin, the scalp and the hair; toilet articles, included in this class, deodorants for personal use, pre shave and after shave preparations’;

- Class 14: ‘Jewellery, watches’;

- Class 18: ‘Leather and imitations of leather, namely suitcases, bags (included in this class); small leather articles (included in this class), especially purses, wallets, key cases; umbrellas and sunshades in the nature of parasols’;

- Class 25: ‘Footwear, clothing, headgear, belts’.

3 On 16 August 2010, the applicant, Tulliallan Burlington Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods in Classes 3, 14 and 18. It is the owner, in central London (United Kingdom), of the ‘Burlington Arcade’ shopping arcade.

4 The opposition was based, inter alia, on the following earlier trade marks and rights:

- the word mark BURLINGTON, registered in the United Kingdom under No 2314342 on 5 December 2003 and duly renewed on 29 October 2012, designating services in Classes 35 and 36 and corresponding, for each of those classes, to the following description:

- Class 35: ‘Rental and leasing of advertising space; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial purposes; advertising and promotion services and information services relating thereto; the bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from general merchandise retail stores’;

- Class 36: ‘Rental of shops and offices; leasing of, or management of real estate; leasing of, or space between or within, buildings; real estate management services; information services relating to the rental of shops and offices; real estate services; fund investments; mutual funds’;

- the word mark BURLINGTON ARCADE, registered in the United Kingdom under No 2314343 on 7 November 2003 and duly renewed on 29 October 2012, designating services in Classes 35, 36 and 41 and corresponding, for Class 41, to the following description: ‘Entertainment services; organisation of competitions; organisation of exhibitions; provision of recreation information; presentation of live performances; provision of sports facilities; provision of live music and live entertainment; provision of facilities for live band performances; provision of live entertainment; provision of live music; provision of live musical performances; provision of live shows’:

- the figurative mark reproduced below and registered in the United Kingdom under No 2330341 on 7 November 2003 and duly renewed on 25 April 2013, designating services in Classes 35, 36 and 41:

- EU figurative mark No 3618857 reproduced below, registered on 16 October 2006 and limited, as a result of cancellation proceedings No 8715 C, to the services in Classes 35, 36 and 41 corresponding, for each of those classes, to the following description: ‘Advertising and promotion services and information services relating thereto; the bringing together for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from a range of general merchandise retail stores’ (Class 35); ‘Rental of shops; leasing of, or management of real estate; leasing of, or space between or within, buildings; real estate management services; information services relating to the rental of shops’ (Class 36); and ‘Entertainment services; provision of live entertainment’ (Class 41):

5 The grounds relied on in support of the opposition were those set out in Article 8(1)(b),(4) and (5) of Regulation No 207/2009 (now Article 8(1)(b),(4) and (5) of Regulation 2017/1001).

6 On 22 November 2013, the Opposition Division, after examining the applicant’s opposition on the basis of EU figurative mark No 3618857, upheld that opposition for the goods in Classes 3, 14 and 18, and therefore ordered the intervener to pay the costs.

7 On 2 January 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

8 By decision of 11 January 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision, ordering the applicant to bear the costs of the opposition proceedings and the appeal proceedings.

9 In the contested decision, the Board of Appeal, found, first, that as regards the application of Article 8(5) of Regulation No 207/2009, the reputation of the earlier marks had been proven in the relevant territory for the services in Classes 35 and 36, with the exception, however, of the service of ‘bringing together for the benefit of others, a variety of goods, enabling customers to conveniently ... purchase those goods from a range of general merchandise retail stores’, in Class 35. Secondly, as regards the ground referred to in Article 8(4) of that regulation, the Board of Appeal found, in essence, that the applicant had not demonstrated that the prerequisites for establishing misrepresentation and damage vis-à-vis the target public had in the present case been met. Thirdly, as regards Article 8(1)(b) of that regulation, it found, in essence, that the goods and services at issue were dissimilar and that a likelihood of confusion was ruled out, irrespective moreover of the similarity of the marks concerned.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

11 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

12 In support of the action, the applicant relies on three pleas in law. In essence, the first plea in law alleges an infringement of Article 8(5) of Regulation No 207/2009, a procedural defect and an infringement of the procedural rules, the second plea in law an infringement of the obligation to state reasons, an infringement of the right to be heard and an infringement of Article 8(4) of that regulation, and the third plea in law an infringement of Article 8(1)(b) of that regulation.

The first plea in law

13 First, the applicant complains, in essence, that the Board of Appeal misconstrued part of the services in Class 35 in respect of which the earlier marks’ reputation had not been established. Secondly, it submits that the Board of Appeal made an error in the definition of the services included in Classes 35 and 36. Thirdly, it alleges a procedural infringement by the Board of Appeal.

14 In support of the first complaint, the applicant submits that the service ‘bringing together for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from a range of general merchandise retail stores’, in Class...