Judgments nº T-815/16 of Tribunal General de la Unión Europea, December 12, 2017

• Resolution Date: December 12, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-815/16

In Case T-815/16,

For Tune sp. z o.o., established in Warsaw (Poland), represented by K. Popławska, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Simplicity trade GmbH, established in Oelde (Germany),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 14 September 2016 (Case R 152/2016-2), relating to opposition proceedings between Simplicity trade and For Tune,

THE GENERAL COURT (Third Chamber),

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

Registrar: E. Coulon,

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

having regard to the response of EUIPO lodged at the Court Registry on 7 February 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 13 June 2012, the applicant, For Tune sp. z o.o., 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), 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)).

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

3 In the trade mark application, the applicant claimed the colours blue ‘pantone cyan c’, white and black and describes the mark in the following manner:

‘A figurative mark consisting of two words, in colour. The word “opus” is in blue (pantone cyan c) and the letter “o” is in white inside a rhombus in blue (pantone cyan c). The word “aeternatum” is in black, upper-case letters.’

4 The goods and services in respect of which registration was sought are Classes 9, 16, 35, 40 and 41 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 9: ‘Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers and pre-recorded discs’;

- Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes, printed matter; book-binding material, photographs, plastic materials for packaging (not included in other classes)’;

- Class 35: ‘Advertising; business management; business administration; office functions’;

- Class 40: ‘Treatment of materials’;

- Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

5 The EU trade mark application was published in Community Trade Marks Bulletin No 2012/165 of 30 August 2012.

6 On 19 November 2012, Simplicity trade GmbH 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 all the goods and services referred to in paragraph 4 above.

7 The opposition was based on the earlier EU word mark OPUS, which was filed on 6 January 2011 and registered on 4 August 2015 under the number 9642026 and covers, inter alia, goods and services in Classes 16, 35 and 41 corresponding, for each of those classes, to the following description:

- Class 16: ‘Goods made from paper and cardboard, included in class 16, namely fashion catalogs; printed matter, namely fashion catalogs; bookbinding material; photographs; stationery, namely writing utensils; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office machines (except furniture); plastic materials for packaging, included in Class 16; printers’ type; printing blocks’;

- Class 35: ‘Advertising; business management services; business administration; office functions; organization of fairs and exhibitions for commercial or advertising purposes; business management and organisation consultancy, procurement services, for others (acquisition of goods and services for other companies), import and export agencies, professional business consultancy, computerised file management, advertising agencies, invoicing, commercial administration of the licensing of goods and services, for others, marketing research, public relations, arranging trade fairs for commercial or advertising purposes, sales promotion (for others), rental of advertising space, publicity material rental, rental of advertising time on communication media (all of the aforementioned services of class 35 only relating to the fashion branch and not relating to the IT-branch); retail and wholesale services (including via the internet and by mail order) in relation to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, spectacles, spectacle and sunglasses cases, sunglasses, skiing goggles, goggles for sports, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers’ type, printing blocks, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, pocket wallets, purses, travelling bags, shopping bags, rucksacks, handbags, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, bed and table covers, clothing, footwear, headgear, belts (clothing), scarves, neckties, collar protectors, headbands, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile)’;

- Class 41: ‘Providing of training, entertainment; presentation of live performances, arranging and conducting of seminars, arranging and conducting of workshops (training), arranging of exhibitions for cultural or educational purposes; (all of the aforementioned services of class 41 are only relating to the fashion branch and not relating to the IT-branch)’.

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

9 On 23 November 2015, the Opposition Division partially upheld the opposition, in respect of the goods and services in Classes 16, 35 and 41 corresponding, for each of those classes, to the following description:

- Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes, printed matter; book-binding material, photographs, plastic materials for packaging (not included in other classes)’;

- Class 35: ‘Advertising; business management; business administration; office functions’;

- Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

10 On 22 January 2016, 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.

11 By decision of 14 September 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

12 First, the Board of Appeal found, that, as regards the goods in Class 16, the relevant public was the general public, the degree of attention of which was average. As regards the services in Class 35, it found that that public consisted of consumers who were professionals and whose level of attention was consequently rather high. Furthermore, with regard to the services in Class 41, the Board of Appeal stated that, as those services were very varied and were aimed both at the general public and at professionals, the level of attention of the public was normal, and that, even though some of the services were limited to the ‘fashion branch’, in which the public consisted of professionals, some of those services were also aimed at the general public and that, in that case, in accordance with the case-law, a lower level of attention had to be taken into consideration.

13 Secondly, as far as the comparison of the goods and services was concerned, the Board of Appeal found that the goods in Class 16 and the services in Class 35 covered by the mark applied for were identical to the goods and services covered by the earlier mark. As regards the services in Class 41 covered by the mark applied for, the Board of Appeal found, in essence, that those services were either identical or similar to the services covered by the earlier mark.

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