Judgments nº T-398/16 of Tribunal General de la Unión Europea, January 16, 2018

• Resolution Date: January 16, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-398/16

(EU trade mark - Opposition proceedings - Application for the EU figurative mark COFFEE ROCKS - Earlier EU figurative marks STARBUCKS COFFEE - Relative ground for refusal - Similarity of the signs - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

In Case T-398/16,

Starbucks Corp., established in Seattle, Washington (United States), represented by J. Schmitt, lawyer, and I. Fowler, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and A. Kusturovic, acting as Agents,

defendant,

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

Hasmik Nersesyan, residing in Borgloon (Belgium),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 May 2016 (Case R 559/2015-4), relating to opposition proceedings between Starbucks Corp. and Ms Hasmik Nersesyan,

THE GENERAL COURT (Third Chamber),

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

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 26 July 2016,

having regard to the response lodged at the Court Registry on 25 October 2016,

further to the hearing on 12 September 2017,

gives the following

Judgment

Background to the dispute

1 On 12 September 2013, Ms Hasmik Nersesyan 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 The services in respect of which registration was sought are in Class 43 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 to the following description: ‘Services for providing drinks’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 225/2013 of 26 November 2013.

5 On 25 February 2014, the applicant, Starbucks Corp., 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 services referred to in paragraph 3 above.

6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001) and the opposition was based on the following earlier marks:

- the EU figurative trade mark in black and white, as reproduced below, which was registered on 28 February 2013 under the number 11198711 and covers goods in Classes 5 and 32:

- the EU figurative trade mark in black and white, as reproduced below, which was registered on 27 May 2009 under the number 7315351 and covers goods and services in Classes 30, 32, 35 and 43:

- the EU figurative trade mark in black and white, as reproduced below, which was registered on 26 October 1999 and renewed until 4 August 2017 under the number 596163 and covers goods and services in Classes 7, 9, 11, 14, 16, 18, 20, 21, 25, 28, 29, 30, 32, 41 and 42 in respect of which reputation of the mark was claimed for ‘Ground and whole bean coffee, coffee and expresso beverages and beverages made a base of coffee and/or espresso, ready to drink coffee’ in Class 30 and ‘Cafes, cafeterias, snack bars and coffee bars; services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption’ in Class 42:

- the EU figurative trade mark in black and white, as reproduced below, which was registered on 23 August 2004 and has been renewed until 5 March 2023 under the number 3086014 and covers services in Classes 35, 36 and 43 in respect of which reputation of the mark was claimed for ‘Cafeteria, coffee shop and snack bar services’ in Class 43:

- the EU figurative trade mark in black and white, as reproduced below, which was registered on 22 February 2010 under the number 8517054 and covers goods and services in Classes 30 and 43:

- the EU figurative trade mark in black, green and white, as reproduced below, which was registered on 8 March 1999 and renewed until 15 September 2017 under the number 630673 and covers services in Class 42 in respect of which reputation of the mark was claimed for all the services:

- the EU figurative trade mark in black and white, as reproduced below, which was registered on 16 February 2000 and renewed until 1 April 2026 under the number 175513 and covers goods in Classes 7, 11, 16, 18, 21, 25, 29, 30 and 32 in respect of which reputation of the mark was claimed for ‘Coffee, coffee based drinks, gourmet baked goods and cakes, coffee beverages, ready-to-drink coffee, coffee-based beverages, espresso and espresso beverages’ in Class 30:

- the EU figurative trade mark in black, green and white, as reproduced below, which was registered on 4 February 2008 under the number 5671938 and covers services in Classes 35 and 43 in respect of which reputation of the mark was claimed for ‘Café, cafeteria, snack bar, coffee bar and coffee house’ in Class 43:

- the EU figurative trade mark in green, white and black, as reproduced below, which was registered on 12 November 2001 and renewed until 7 October 2017 under the number 689786 and covers goods and services in Classes 7, 9, 11, 16, 18, 21, 25, 29, 30, 32, 41 and 42 in respect of which reputation of the mark was claimed for ‘Ground and whole bean coffee, coffee and expresso beverages and beverages made with a base of coffee and/or espresso, ready to drink coffee’ in Class 30 and ‘Cafes, cafeterias, snack bars and coffee bars; services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption’ in Class 42:

- the United Kingdom figurative mark in green, white and black, as reproduced below, which was registered on 21 December 2007 under the number 2445926 and covers goods and services in Classes 30, 35 and 43 in respect of which reputation of the mark was claimed for ‘Ground and whole bean coffee, coffee, expresso beverages, and beverages made with a base of coffee and/or espresso, baked goods, pastries, ready-to-drink coffee’ in Class 30 and ‘Café, cafeteria, snack bar, coffee bar, coffee house’ in Class 43:

- the Spanish figurative mark in green and white, as reproduced below, which was registered on 1 July 2011 under the number 2973961 and covers services in Class 42 in respect of which reputation of the mark was claimed for ‘Services for providing drink’ in that class:

7 The opposition was based on all the goods and services covered by the earlier marks and directed against all the contested services and the applicant filed a great deal of evidence in support of the alleged reputation of its marks.

8 On 19 February 2015, the Opposition Division rejected the opposition in its entirety.

9 On 17 March 2015, 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.

10 By decision of 24 May 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

12 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

13 In support of the action, the applicant relies on two pleas in law. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea alleges infringement of Article 8(5) of Regulation No 207/2009.

The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

14 The applicant submits that the Board of Appeal erred in finding that there was no likelihood of confusion between the mark applied for and the earlier marks.

15 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion...