Judgments nº T-629/16 of Tribunal General de la Unión Europea, March 01, 2018

• Resolution Date: March 01, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-629/16

(EU trade mark - Opposition proceedings - Application for EU figurative mark consisting of two parallel stripes on a shoe - Earlier EU figurative mark representing three parallel stripes on a shoe - Relative ground for refusal - Damage to reputation - Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

In Case T-629/16,

Shoe Branding Europe BVBA, established in Oudenaarde (Belgium), represented by J. Løje, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė and A. Söder, acting as Agents,

defendant,

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

adidas AG, established in Herzogenaurach (Germany), represented by I. Fowler and I. Junkar, Solicitors,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 June 2016 (Case R 597/2016-2), relating to opposition proceedings between adidas and Shoe Branding Europe,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise and K. Kowalik-Bańczyk (Rapporteur), Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Registry of the General Court on 1 September 2016,

having regard to the response of EUIPO lodged at the Court Registry on 1 December 2016,

having regard to the response of the intervener lodged at the Court Registry on 21 December 2016,

further to the hearing on 6 July 2017,

gives the following

Judgment

Background to the dispute

1 On 1 July 2009 the applicant, Shoe Branding Europe BVBA, 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 The trade mark in respect of which registration was sought, identified by the applicant as an ‘other’ mark, is reproduced below:

3 In the application for registration, the trade mark is described as follows:

‘The trade mark is a position mark. The mark consists of two parallel lines positioned on the outside surface of the upper part of a shoe. The parallel lines run from the sole edge of a shoe and slopes backwards to the middle of the instep of a shoe. The dotted line marks the position of the trade mark and does not form part of the mark’.

4 The goods in respect of which registration was sought fall within Class 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 to the following description: ‘Footwear’.

5 The EU trade mark application was published in Community Trade Marks Bulletin No 107/2010 of 14 June 2010.

6 On 13 September 2010 the intervener, adidas AG, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of all the goods referred to in the application for registration.

7 The opposition was based, inter alia, on the following earlier rights:

- the EU figurative mark, registered on 26 January 2006 under No 3517646, for ‘footwear’ in Class 25, with the following description: ‘The mark consists of three parallel equally spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole’. That trade mark (‘the earlier mark’) is reproduced below:

- the German ‘other type of trade mark’, registered on 14 December 1999 under No 39950559 and duly renewed, for ‘footwear, including sports and casual footwear’ in Class 25, with the following description: ‘The mark consists of three stripes contrasting with the base colour of the footwear. The shape of the shoe serves only for representing how the mark is applied, it does not as such form part of the mark’. That trade mark (‘German trade mark No 39950559’) is reproduced below:

8 The grounds relied on in support of the opposition were, in particular, those referred to 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, respectively).

9 By decision of 22 May 2012, the Opposition Division rejected the opposition.

10 On 2 July 2012 the intervener filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

11 By decision of 28 November 2013, the Second Board of Appeal of EUIPO dismissed the appeal on the ground, inter alia, that the trade marks at issue were different overall and that that fact was sufficient, first, to rule out any likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009, and secondly, to make it unlikely that the same public would establish a link between the trade marks at issue, and, consequently, that any of the types of injury referred to in Article 8(5) of that regulation would occur (‘the decision of 28 November 2013’).

12 The intervener then challenged that decision before the Court.

13 By judgment of 21 May 2015, adidas v OHIM - Shoe Branding Europe (Two parallel stripes on a shoe) (T-145/14, not published, ‘the annulling judgment’, EU:T:2015:303), the Court annulled the decision of 28 November 2013, on the ground that the Board of Appeal had wrongly concluded that there was no similarity whatsoever between the marks at issue and that that error of assessment had distorted the Board of Appeal’s assessment as to whether there was, on the part of the public, a likelihood of confusion or, a fortiori, a likelihood that a connection would be made between the marks at issue.

14 The applicant then brought an appeal against that judgment.

15 By order of 17 February 2016, Shoe Branding Europe v OHIM (C-396/15 P, not published, ‘the order on the appeal’, EU:C:2016:95), the Court of Justice dismissed that appeal.

16 As a result of the annulling judgment and of the order on the appeal, the Second Board of Appeal of EUIPO re-examined the appeal brought by the intervener against the decision of the Opposition Division.

17 By decision of 8 June 2016 (‘the contested decision’), the Board of Appeal upheld that appeal and allowed the opposition on the basis of Article 8(5) of Regulation No 207/2009. In particular, it considered that, given a certain degree of similarity between the marks at issue, the identity between the goods covered by those trade marks and the high reputation of the earlier mark, there was a likelihood that the relevant public might establish a link between the marks at issue and that the use of the mark applied for could take unfair advantage of the reputation of the earlier mark, without that use being, in the case at hand, justified by due cause.

Forms of order sought by the parties

18 The applicant claims that the Court should:

- annul the contested decision;

- order the Board of Appeal to pay the costs.

19 During the hearing, the applicant indicated that its second head of claim was to be understood as seeking an order that EUIPO pay the costs, which the Court acknowledged in the minutes of the hearing.

20 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

21 In support of its action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009 and a ‘distortion of facts’. According to the applicant, the Board of Appeal erred in finding that the conditions for refusing registration of a trade mark provided for in Article 8(5) of Regulation No 207/2009 were fulfilled in the present case.

22 That plea is divided into three parts in so far as the applicant claims that the Board of Appeal made several errors of assessment as regards (i) the evidence of the reputation of the earlier mark, (ii) the existence of damage to the reputation or distinctive character of that trade mark and (iii) the absence of any due cause for the use of the mark applied for.

General considerations on Article 8(5) of Regulation No 207/2009

23 Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) of the same regulation (now Article 8(2) of Regulation 2017/1001), the trade mark applied for must not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

24 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier mark must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to...