Judgments nº T-61/16 of Tribunal General de la Unión Europea, December 07, 2017

• Resolution Date: December 07, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-61/16

(EU trade mark - Opposition proceedings - Application for the EU figurative mark Master - Earlier European Union figurative marks Coca-Cola and earlier national figurative mark C - Relative ground for refusal - Unfair advantage taken of the reputation of earlier marks - Evidence relating to the commercial use, outside the European Union, of a sign comprising the mark applied for - Logical inferences - Decision taken following the annulment by the General Court of an earlier decision - Article 8(5) and Article 65(6) of Regulation (EC) No 207/2009 (now Article 8(5) and Article 72(6) of Regulation (EU) 2017/1001))

In Case T-61/16,

The Coca-Cola Company, established in Atlanta, Georgia (United States), represented by S. Malynicz, QC, S. Baran, Barrister, D. Stone and A. Dykes, solicitors,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,

defendant,

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

Modern Industrial & Trading Investment Co. Ltd (Mitico), established in Damas (Syria), represented by A.-E. Malamis, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 2 December 2015 (Case R 1251/2015-4), relating to opposition proceedings between The Coca-Cola Company and Mitico,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, M. Kancheva (Rapporteur) and J. Passer, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 12 February 2016,

having regard to the response of EUIPO lodged at the Court Registry on 28 April 2016,

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

having regard to the Court’s written question to the parties and their replies to that question lodged at the Court Registry on 12 and 20 April 2017,

on the basis of the hearing of 15 June 2017,

gives the following

Judgment

Background to the dispute

1 On 10 May 2010, the intervener, Modern Industrial & Trading Investment Co. Ltd (Mitico), 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 Community trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Council Regulation (EC) 2017/1001 of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the following figurative sign:

3 The goods in respect of which registration was sought fall - after the restriction made during the proceedings before EUIPO - within Classes 29, 30 and 32 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 29: ‘Yoghurt. Meat, fish, poultry and game, meat extracts. Preserved, frozen, dried and cooked fruits and vegetables. Jellies, marmalades, fruit preserve. Eggs. Preserved and pickles. Salads in vinegar. Potatoes chips’;

- Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, confectionery, candies, ice-creams, honey, melassa syrup, dough, flour, baker’s yeast, baking-powder, salt, mustard, vinegar, pepper, sauces (condiments), spices, specifically excluding pastry and bakery products, ice, chocolate, gum, all kinds of food appetizers made from corn and wheat, specifically excluding pastry and bakery products’;

- Class 32: ‘Mineral and natural water, barley beverage, non-alcoholic beers, non-alcoholic aerated waters of all kinds and flavours, particularly with (cola - pineapple - mango - orange - lemon - without flavour - apples - fruit cocktail formed - Tropical - energy drink - strawberry - fruits - lemonade - pomegranate ...) taste, and all types of non-alcoholic natural fruit juice drinks (apples - lemon - orange - fruit - cocktail - pomegranate - pineapple - mango…), and non-alcoholic juice concentrates and concentrates for making non-alcoholic juice in all types, powders and crushes for making non-alcoholic syrup’.

4 The application for an EU trade mark was published in the Bulletin of Community Trade Marks No 128/2010 of 14 July 2010.

5 On 14 October 2010, the applicant, The Coca-Cola Company, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based, first of all, on four earlier European Union figurative marks reproduced below:

- mark registered under number 8792475:

- mark registered under number 3021086:

- mark registered under number 2117828:

- mark registered under number 2107118:

7 Those four earlier European Union figurative marks respectively covered, inter alia, goods and services in: (i) Classes 30, 32 and 33; (ii) Class 32; (iii) Classes 32 and 43; and (iv) Classes 32 and 33. Those goods and services correspond, for each of those trade marks and classes, to the following description:

- European Union mark No 8792475:

- Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour, preparations made from cereals, bread, pastry and confectionery products, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;

- Class 32: ‘Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages’;

- Class 33: ‘Alcoholic beverages (except beers)’;

- European Union mark No 3021086: ‘Beverages, namely drinking waters, flavoured waters, mineral and aerated waters; and other non-alcoholic beverages, namely, soft drinks, energy drinks and sports drinks; fruit drinks and juices; syrups, concentrates and powders for making beverages, namely flavoured waters, mineral and aerated waters, soft drinks, energy drinks, sports drinks, fruit drinks and juices’ falling within Class 32;

- European Union mark No 2117828:

- Class 32: ‘Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages’;

- Class 43: ‘Providing of food and drink; temporary accommodation’;

- European Union mark No 2107118:

- Class 32: ‘Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages’;

- Class 33: ‘Alcoholic beverages (except beers)’.

8 Secondly, the opposition was based on the earlier United Kingdom figurative mark, registered under number 2428468, reproduced below:

9 That earlier United Kingdom figurative mark referred in particular to goods in Class 32 corresponding to the following description: ‘Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages’.

10 The grounds for opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).

11 During the opposition proceedings, the applicant adduced evidence relating, according to it, to the commercial use by the intervener of the trade mark applied for. That evidence included a witness statement by Mrs R., then the applicant’s lawyer, dated 23 February 2011, to which she appended screen shots of the intervener’s website, ‘www.mastercola.com’, printed on 16 February 2011. Those screen shots were intended to show that Mitico was using the mark applied for in the course of trade in the form shown below:

12 On 26 September 2011, the Opposition Division rejected the opposition in its entirety.

13 On 17 October 2011, the applicant 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 decision of the Opposition Division.

14 By decision of 29 August 2012 (‘the first decision’), the Second Board of Appeal of EUIPO dismissed the appeal. First, concerning the ground of opposition based on Article 8(1)(b) of Regulation No 207/2009, it considered that it was clear from the outset that the signs at issue were not at all similar and therefore concluded that there was no likelihood of confusion between them, despite the identity of the goods at issue. Secondly, concerning the ground of opposition based on Article 8(5) of that regulation, it considered that, since the signs were not similar, the first requirement governing the application of that article, namely the existence of a link between the trade mark applied for and the earlier mark, was not satisfied. Furthermore, it disregarded the evidence adduced by the applicant (see paragraph 11 above), on the ground that, in the context of that article, only the use of the trade mark applied for by the intervener could be taken into account.

15 On 5 November 2012, the applicant brought an action before the Court seeking annulment of the first decision. In support of its action, the applicant raised, in essence, a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009, divided into two parts. In the first part, it criticised EUIPO for combining the assessment of the similarity of the marks at issue under Article 8(1)(b) of that regulation with the assessment as to whether there was a link between those marks under Article 8(5) of that regulation. In the second part, it complained that EUIPO failed to take account of the evidence relating to the commercial use of the trade mark applied for, which was relevant in order to establish the intervener’s...