Judgments nº T-238/17 of Tribunal General de la Unión Europea, September 25, 2018

• Resolution Date: September 25, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-238/17

(EU trade mark - Invalidity proceedings - EU figurative mark GUGLER - Earlier national company name Gugler France - Relative ground for refusal - Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) - Likelihood of confusion)

In Case T-238/17,

Alexander Gugler, residing in Maxdorf (Germany), represented by M.-C. Simon, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by P. Sipos and subsequently by A. Folliard-Monguiral, acting as Agents,

defendant,

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

Gugler France, established in Besançon (France), represented by A. Grolée, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 31 January 2017 (Case R 1008/2016-1), relating to invalidity proceedings between Gugler France and Mr Gugler,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, M. Kancheva and G. De Baere (Rapporteur), Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 25 April 2017,

having regard to the response of EUIPO lodged at the Court Registry on 30 June 2017,

having regard to the response of the intervener lodged at the Court Registry on 12 June 2017,

having regard to the written questions put by the Court to the parties and their answers to those questions, lodged at the Court Registry on 13 and 20 February 2018,

further to the hearing on 15 March 2018,

gives the following

Judgment

Background to the dispute

1 On 31 August 2005, Gugler GmbH, the predecessor in title of the applicant, Mr Alexander Gugler, obtained from the European Union Intellectual Property Office (EUIPO) registration, under No 3324902, of the following EU figurative mark (‘the contested mark’):

2 Application for that registration had been filed on 25 August 2003.

3 The goods and services in respect of which the contested mark was registered are in Classes 6, 17, 19, 22, 37, 39 and 42 within the meaning 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 6: ‘Light-protection devices, namely awnings, folding shutters, roller blinds of metal’;

- Class 17: ‘Sound-proofing materials, namely rockwool and foam plastic elements’;

- Class 19: ‘Windows, roofing, doors, gates, shutters, roller blind boxes of glass and plastic; glazings, namely conservatories, conservatory roofs; light protection devices, namely folding shutters and roller blinds of plastic’;

- Class 22: ‘Light protection devices, namely awnings of plastic’;

- Class 37: ‘Window construction services, namely fitting of doors, gates and windows’;

- Class 39: ‘Transportation’;

- Class 42: ‘Window construction services, namely planning of doors, gates and windows’.

4 On 15 December 2009, EUIPO registered the licence for the use of the contested mark granted by the applicant to Gugler GmbH.

5 On 17 November 2010, the intervener, Gugler France, submitted an application for a declaration of invalidity of the contested mark in respect of all the goods and services covered by it. That application was based, first, on the contention that the proprietor of the contested mark acted in bad faith when it filed the application for the trade mark, within the meaning of Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 59(1)(b) of 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)) and, second, on the intervener’s company name, which, under French law, allowed it to prohibit use of the contested mark within the meaning of Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001).

6 The intervener was incorporated in January 2002 and was registered on 7 February 2002 in the commercial and companies register of Besançon (France) under the company name Gugler France. According to that register, and to Article 2 of its articles of association, the intervener’s objects are ‘purchasing, trade in, selling and fitting building-closing devices, by any and all means or processes’.

7 By decision of 21 December 2011, the Cancellation Division of EUIPO upheld the application for a declaration of invalidity in respect of all the goods and services covered by the contested mark, on the basis of Article 53(1)(c) of Regulation No 207/2009.

8 On 16 February 2012, the applicant lodged an appeal against the Cancellation Division’s decision.

9 On 26 August 2013, upon application by the applicant, the contested mark was the subject of a partial renewal, limited to the goods and services in Classes 19, 37 and 42 cited in paragraph 3 above. The partial renewal was published in Community Trade Marks Bulletin No 167/2013 of 4 September 2013.

10 By decision of 16 October 2013, in Case R 356/2012-4, the Fourth Board of Appeal of EUIPO annulled the decision of the Cancellation Division and dismissed the application for a declaration of invalidity.

11 On 18 December 2013, the intervener brought an action before the General Court against the decision of the Fourth Board of Appeal of EUIPO.

12 By judgment of 28 January 2016, Gugler France v OHIM - Gugler (GUGLER) (T-674/13, not published, EU:T:2016:44), the Court annulled that decision. It found that the Board of Appeal had infringed the obligation to state reasons laid down in Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001), first, when it ruled on the ground for invalidity based on Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation, and, second, when it ruled on the ground for invalidity based on Article 52(1)(b) of Regulation No 207/2009.

13 By decision of 6 June 2016, the Presidium of the Boards of Appeal of EUIPO referred the case to the First Board of Appeal, under reference R 1008/2016-1, for a new decision, in accordance with Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001).

14 By decision of 31 January 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal against the decision of the Cancellation Division and found that the application for a declaration of invalidity of the contested mark should be upheld on the basis of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation.

15 The Board of Appeal observed that the earlier sign on which the application for a declaration of invalidity was based was the company name of the intervener, Gugler France. First of all, the Board of Appeal found that the conditions laid down in Article 8(4) of Regulation No 207/2009 were satisfied. First, it took the view that the earlier sign had been used in the course of trade with more than merely local significance. In that regard, it found that the evidence adduced by the intervener, in particular copies of its annual report for 2002 and 2003 and invoices, were sufficient to prove that it carried out, under its company name, activities connected with those for which it had been incorporated, prior to the date of application for the contested mark and with more than merely local significance. Second, the Board of Appeal stated that the intervener had acquired rights to the sign on the day on which it was registered in the register of trade and companies, which is the relevant date under Article L. 210-6 of the code de commerce (French Code of Commerce), namely on 7 February 2002, that is to say, prior to the date on which the application for the contested mark was filed. Third, the Board of Appeal noted that, under Article L. 711-4 of the code de la propriété intellectuelle (French Intellectual Property Code), on which the application for a declaration of invalidity was based, the intervener’s company name entitled it to prohibit...