Judgments nº T-159/17 of Tribunal General de la Unión Europea, March 08, 2018
|Resolution Date:||March 08, 2018|
|Issuing Organization:||Tribunal General de la Unión Europea|
Procedimiento prejudicial - Artículos 49 TFUE y 54 TFUE - Libertad de establecimiento - Legislación tributaria - Impuesto sobre sociedades - Ventajas vinculadas a la constitución de una unidad fiscal única - Exclusión de los grupos transfronterizos
(EU trade mark - Opposition proceedings - Application for the EU figurative mark Claro Sol Facility Services desde 1972 - Earlier national figurative mark SOL - 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))
In Case T-159/17,
Claro Sol Cleaning, SLU, established in Madrid (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Solemo Oy, established in Helsinki (Finland), represented by M. Müller and A. Fottner, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 9 January 2017 (Case R 478/2016-1), relating to opposition proceedings between Solemo and Claro Sol Cleaning,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva and R. Barents (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 March 2017,
having regard to the response of EUIPO lodged at the Court Registry on 6 June 2017,
having regard to the response of the intervener lodged at the Court Registry on 30 May 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
Background to the dispute
1 On 1 October 2014, the applicant, Claro Sol Cleaning, SLU, 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 Classes 35, 37 and 39 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 35: ‘Services provided by persons or organisations, the principal purpose of which is commercial management assistance; business management, business administration, office functions; wholesaling and retailing in shops and via computer networks of household and industrial cleaning products, solvents, turpentine and solvents and chemicals of all kinds in general; franchising relating to business management assistance; advertising; sales promotion for others and sole agency, including via advertising matter and online advertisements; organisation of events, trade fairs, exhibitions and business deals for commercial or advertising purposes; business management assistance and consulting; import and export services; advertising also via global networks; business administration, including via global communications networks; business guidance services; auctioneering via global computer networks of household and industrial cleaning products; and the sale of solvents, turpentine and solvents and chemicals of all kinds in general; professional business consultancy, organisation of exhibitions for commercial purposes; commercial information, distribution of samples, advertisements and advertising matter; cost price analysis, marketing studies and research, efficiency experts, transcription and compilation of written communications and recordings and data of any kind; operation or management of an industrial or commercial enterprise; assistance relating to franchises; advertising; commercial administration of the licensing of the goods and services of others; computerised file management; professional business management; business appraisals; efficiency experts; business information; administrative processing of purchase orders; services involving the recording, transcription, composition, compilation or systemisation of written communications and recordings; compilation of mathematical or statistical data; support, assistance, advice, guidance and consultancy relating to the organisation, administration, operation, conducting and conveyancing of businesses and/or companies; sales promotion by means of loyalty cards and memberships that award bonuses, discounts and prizes; marketing and advertising consultancy and services; market research and surveys; commercial and business information; auditing and accounting; organisation of trade fairs and exhibitions for commercial or advertising purposes; telephone order-taking services for others; clerical services for the taking of sales orders; organisation for a third party of telephone welcoming services and of telephone receptionist services; mail sorting, handling and receiving; commercial intermediation services; consultancy, management, selection, recruitment, allocation, placement, recruitment and staffing; providing of staff to others; advice relating to the management and recruitment of staff; secretarial services and providing of secretaries and administrative staff; reprographic services; management and digitisation for others’;
- Class 37: ‘Cleaning, disinfecting, fumigation, rat exterminating, restoration, repair and interior and exterior maintenance of public and private buildings; cleaning and maintenance of large sales outlets, offices, health centres, industrial units, pharmaceutical industrial units, food industrial units, education centres, hotels, vehicles, trains, boats and aircraft; street and urban cleaning, cleaning of works, windows and curtain walling; polishing (cleaning); beach cleaning, domestic cleaning, leather cleaning, furniture cleaning, carpet cleaning, window cleaning, hygienic cleaning (swimming pools), sink cleaning, sewer cleaning, drain cleaning, upholstery cleaning, spillage cleaning, dry cleaning, street cleaning, road cleaning, hygienic cleaning (baths), cleaning of boilers, cleaning of commercial premises, machine cleaning, cleaning of nuclear plants, cleaning of public conveniences, cleaning of industrial installations, cleaning of electric motors, mechanical cleaning of waterways, cleaning of domestic premises; cleaning and polishing of motor vehicles; septic tank pumping and cleaning; valeting services relating to industrial cleaning; emptying [cleaning] services; cleansing of mobile structures; waste removal [cleaning]; cleaning of domestic utensils; cleaning by means of sanding (services for -); cleaning by water jetting (services for -); underwater abrasive cleaning of non-metallic surfaces; air duct cleaning services; cleaning of fabric, textiles, leather and hides; rental and hire of cleaning apparatus and equipment; integral, regulatory, conductive, preventative and corrective maintenance of electricity, air-conditioning, fire control, elevator, plumbing, brickwork, painting, gardening and energy-saving installations; janitorial services’;
- Class 39: ‘Transport, distribution, storage, conditioning, packaging and replacement of merchandise and goods; passenger transport, transport and unloading of refuse and waste, transport and emptying of containers; cargo loading and unloading services; replacement and delivery of goods; packaging and preparation of deliveries; sending and collection of deliveries and packages; mail, internal mail and messaging; organisation of deliveries of goods and delivery of orders via mail; removal services; packaging and wrapping of goods; consultancy and information relating to the logistics of distributing and locating goods; transport agencies for arranging the transportation of goods’.
4 The EU trade mark application was published in Community Trade Marks Bulletin on 14 November 2014.
5 On 10 February 2015, the intervener, Solemo Oy, 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 opposition was based on the following earlier Finnish figurative mark, which was filed on 19 May 2009 and registered on 30 November 2010 under the number 250356:
7 The services in respect of which that mark has been registered are in Classes 35, 37 and 39 and correspond, for each of those classes, to the following description:
- Class 35: ‘Recruitment services, secondment of personnel, reception services in lobbies of business premises (administrative services), office functions’;
- Class 37: ‘Cleaning services, laundry services and laundry activities; real estate management services, renovation, maintenance, repair and installation services on commission carried out for others as home help services’;
- Class 39: ‘Transportation, packaging and courier services relating to mailing services, cleaning services, real estate management and to security services as well as to laundry activities, mailing services’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9 By decision of 14 January 2016, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the signs at issue. As regards, in the first place, the comparison of the services at issue, the Opposition...
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