Judgments nº T-824/16 of Tribunal General de la Unión Europea, March 13, 2018

• Resolution Date: March 13, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-824/16

(EU trade mark - Opposition proceedings - International registration designating the European Union - Figurative mark K - Earlier Benelux figurative mark K - 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-824/16,

Kiosked Oy Ab, established in Espoo (Finland), represented by L. Laaksonen, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Fischer, acting as Agent,

defendant,

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

De Vlaamse Radio- en Televisieomroeporganisatie (VRT), established in Brussels (Belgium), represented by P.-Y. Thoumsin and E. Van Melkebeke, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 September 2016 (Case R 279/2016-4), relating to opposition proceedings between VRT and Kiosked,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 21 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 16 February 2017,

having regard to the response of the intervener lodged at the Court Registry on 10 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 27 February 2012, the applicant, Kiosked Oy Ab, obtained international registration No 1112969 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO).

2 International registration No 1112969 designating the European Union was obtained in respect of the following figurative sign:

3 The goods and services in respect of which registration was obtained are in Classes 9, 35 and 42 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: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus’;

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

- Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’.

4 International registration No 1112969 designating the European Union was notified on 3 May 2012 to 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)). It was published in Community Trade Marks Bulletin No 2012/085 of 7 May 2012. On 7 February 2013, the intervener, De Vlaamse Radio- en Televisieomroeporganisatie (VRT), 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 covered by that mark.

5 The opposition was based on four earlier trade marks, including the figurative mark reproduced below, which was registered on 10 August 2010 with the Benelux Office for Intellectual Property (BOIP) under the number 882400:

6 The earlier Benelux trade mark No 882400 was registered for goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 43 and, inter alia, for the following goods and services:

- Class 9: ‘Photography, cinematographic, optical and signalling devices and instruments; apparatus for recording, transmission or reproduction of sound of images; magnetic data carriers; sound and image recording discs; videotapes, CDs, CDIs, CD-ROMs and DVDs; magnetic or coded club and membership cards; video-, audio- and computing devices; apparatus for games adapted for use with television receivers only’;

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

- Class 41: ‘Education, instruction services, training and courses’;

- Class 42: ‘Computer programming; the design and web site development services, not all featuring moving statues; designs and development for software for multimedia applications’.

7 The three other earlier marks on which the opposition was based are the following:

- the figurative mark reproduced below, which was registered on 10 August 2010 with BOIP under the number 882402 in respect of goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 43:

- the figurative mark reproduced below, which was registered on 7 June 2006 with BOIP under the number 796522 in respect of goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 43:

- the figurative mark reproduced below, which was registered on 7 June 2006 with BOIP under the number 796523 in respect of goods and services in Classes 9, 14, 16, 18, 24, 25, 28, 35, 38 and 41 to 43:

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). The opposition concerned all the goods and services covered by the mark applied for and was based on all the goods and services covered by the earlier marks.

9 By decision of 10 December 2015, on the basis of Article 8(1)(b) of Regulation No 207/2009, the Opposition Division partially upheld the opposition in respect, inter alia, of the following services:

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

- Class 42: ‘Design and development of computer software’.

10 On 9 February 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 19 September 2016 (the contested decision), the Board of Appeal of EUIPO dismissed the appeal as regards the services referred to in paragraph 9 above.

12 Taking into account, first, the lower than average degree of visual similarity between the marks, the impossibility of comparing them phonetically and the ‘neutral’ nature of the conceptual comparison and, secondly, having regard to the ‘normal’, or even ‘no more than average’, degree of inherent distinctiveness of the earlier Benelux trade mark No 882400, the Board of Appeal found, in essence, that there was, so far as concerns the services in Classes 35 and 42 which it had found to be identical, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation (EC) No 207/2009 between the mark applied for and that earlier Benelux trade mark.

13 Furthermore, the Board of Appeal took the view that there was also a likelihood of confusion as regards the goods in Class 9 covered by the mark applied for and by the earlier Benelux trade mark No 882400 which could be held to be identical.

Forms of order sought

14 The applicant claims that the Court should:

- annul the contested decision in so far as the Board of Appeal dismissed its appeal as regards the services ‘advertising; business management; business administration; office functions’ in Class 35 and the services ‘design and development of computer software’ in Class 42;

- allow the mark applied for to proceed to registration in respect of those services;

- order the intervener to pay all the costs incurred by the applicant in the opposition proceedings, including the costs of legal representation, in accordance with the breakdown of costs to be submitted by the applicant within the deadline referred to in Article 85 of Regulation No 207/2009 (now Article 109 of Regulation 2017/1001), and, should such a breakdown fail to be submitted, in accordance with the relevant legislation;

- order the intervener to pay the costs incurred by the applicant in the course of the present proceedings, in accordance with Article 85 of Regulation No 207/2009.

15 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

16 The intervener contends that the Court should:

- dismiss the action;

- order the applicant to pay all the costs incurred by the intervener in the opposition proceedings and in the present proceedings, including the costs of legal representation, in accordance with the breakdown of costs to be submitted by the intervener within the deadline referred to in Article 85 of Regulation No 207/2009, and, should such a breakdown fail to be submitted, in accordance with the relevant legislation.

17 The second subparagraph of paragraph 37 of the intervener’s response reads as follows:

‘For these reasons, the action should be dismissed and the Intervener’s opposition upheld in its entirety. Furthermore, the Appellant should...