Judgments nº T-62/16 of Tribunal General de la Unión Europea, September 26, 2018

• Resolution Date: September 26, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-62/16

(EU trade mark - Opposition proceedings - Application for EU figurative mark PUMA - Earlier international figurative trade marks PUMA - Relative ground for refusal - Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

In Case T-62/16,

Puma SE, established in Herzogenaurach (Germany), represented by P. González-Bueno Catalán de Ocón, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and D. Walicka, acting as Agents,

defendant,

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

Doosan Machine Tools Co. Ltd, established in Seongsan-gu, Changwon-si (South Korea), represented by R. Böhm and S. Overhage, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 December 2015 (Case R 1052/2015-4), relating to opposition proceedings between Puma and Doosan Infracore Co. Ltd,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 15 February 2016,

having regard to the response of EUIPO lodged at the Court Registry on 10 May 2016,

having regard to the response of the intervener lodged at the Court Registry on 17 May 2016,

having regard to the order of 19 September 2016 authorising Doosan Machine Tools to replace Doosan Infracore,

having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Fourth Chamber,

further to the hearing on 20 September 2017,

gives the following

Judgment

Background to the dispute

1 On 27 November 2012, Doosan Infracore Co. Ltd, which was replaced by the intervener, Doosan Machine Tools Co. Ltd, 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 goods in respect of which registration was sought are in Class 7 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: ‘Lathes; CNC (computer numerical control) lathes; machining centres; turning centre; electric discharge machine’.

4 The trade mark application was published in Community Trade Marks Bulletin No 12/2013 of 17 January 2013.

5 On 16 April 2013, the applicant, Puma SE, lodged an 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 of the goods referred to in paragraph 3 above.

6 The opposition was based on the following earlier trade marks:

- the earlier international figurative mark registered on 22 July 1991 under No 582886 and renewed until 22 July 2021 with effect in Germany, Austria, the Benelux, Bulgaria, Cyprus, Denmark, Spain, Estonia, France, Finland, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, the Czech Republic, Romania, the United Kingdom, Slovakia and Slovenia, reproduced below:

- the earlier international figurative mark registered on 12 April 1978 under No 437626 and renewed until 12 April 2028 with effect in Germany, Austria, the Benelux, France, Spain, Hungary, Italy, Portugal, the Czech Republic, Romania, Slovakia and Slovenia, reproduced below:

7 The earlier international figurative mark No 582886 covers, inter alia, goods in Classes 7, 18, 25 and 28 corresponding, for each of those classes, to the following description:

- Class 7: ‘Wood, leather and plastic working machines; sewing machines, paper machines, polishing machines (not for household use), presses (machines), stamping and punching machines, sharpening and sanding machines, cutters for industrial purposes, textile machines, packaging machines, grinding machines; machine tools; motors and engines (other than for land vehicles); transmission couplings and belts (other than those intended for land vehicles); mechanically-operated agricultural instruments and apparatus; agricultural machines’;

- Class 18: ‘Goods of leather and/or imitation leather (included in this class); handbags and other cases not adapted to the goods for which they are intended as well as small leather goods, particularly purses, wallets, key cases; handbags, briefcases for documents, storage bags and shopping bags, school bags and satchels, bags for campers, backpacks, pouches, bags for matches (sports), transport and storage bags for permanent use and travelling bags of leather, synthetic materials and/or textile fabrics and cloths; travelling sets (leatherware); shoulder belts; animal skins and hides; trunks and suitcases; pocket key-holders of leather or leather substitutes; umbrellas, parasols and walking sticks; whips, saddlery; storage bags for bicycles’;

- Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers, non-slipping devices for footwear, studs and spikes; interlining (stiffening), ready-made pockets for clothing; corsetry articles; boots, boot liners and mules, slippers; finished articles for footwear, street, sports, leisure, training, jogging, gymnastic, bath and physiological footwear (included in this class), tennis shoes; leggings and gaiters, leggings and gaiters of leather, leg warmers, puttees, gaiters for shoes; training overalls, gym trunks and knitwear, football trunks and knitwear, tennis shirts and shorts, bath and beach clothing and outfits, bathing trunks, bikinis and bathing suits, including two-piece bathing suits, sports and leisure clothing and outfits (including knitted clothing and outfits and jerseys), also for physical training, jogging or endurance racing and gymnastics, sports trunks and pants, knitwear, pullovers, tee-shirts, sweatshirts, clothing and outfits for tennis and skiing; tracksuits and outfits for leisure, tracksuits and outfits adapted for all weather, stockings (hosiery), socks for football, gloves, including gloves of leather, also of imitation leather or of synthetic leather, knitted caps and caps, headbands and headbands as hairdressing accessories, sweatbands, sashes for wear, fichus, scarves, mufflers, neckties; belts, anoraks and parkas, reefer jackets and raincoats, coats, blouses, jackets and suit coats, skirts, panties, underpants and trousers, including denim trousers, pullovers and coordinated sets comprising several garments and undergarments; gloves for cross-country skiing or for ski touring and for cycling’;

- Class 28: ‘Games, toys, including miniature shoes and miniature balls (as toys), balloons; articles for gymnastics and sports (included in this class); apparatus and machines for physical training, gymnastics and sports; ski, tennis and fishing equipment; skis, ski bindings, ski poles; ski edges, skins for skis; balls and balloons for games, including balls for sports and games; dumb-bells, bowls, discuses, javelins; tennis rackets and their parts and components, in particular handles and grips, strings, bands and tapes for handles and grips and lead-coated strips for tennis rackets, ping-pong or table tennis, badminton and squash rackets and bats, cricket bats and golf and hockey sticks and clubs; tennis balls and shuttlecocks; roller skates and skates, tables for table tennis; gymnastic clubs, hoops for sports, nets for sports, goal nets and nets for balls; sports gloves, particularly gloves for goalkeepers; dolls, dolls’ clothes, dolls’ shoes, caps and knitted caps for dolls, dolls’ belts, aprons for dolls; knee guards, elbow guards, ankle guards and leg guards for sports; chairs for referees of tennis matches; decorations for Christmas trees; bags for sports equipment and apparatus, which are adapted to the goods to be contained, golf bags, bags and cases for tennis rackets, for ping-pong and badminton rackets and bats, as well as for squash, cricket and hockey bats and sticks; footwear for sets for roller skating, also with reinforced soles’.

8 The earlier international figurative mark No 437626 covers goods in Classes 18, 25 and 28 corresponding, for each of those classes, to the following description:

- Class 18: ‘Leather and imitations of leather, namely bags, trunks and suitcases, carrying bags, travel bags, especially for sports equipment and sportswear’;

- Class 25: ‘Clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes’;

- Class 28: ‘Games, toys; apparatus for physical exercise, gymnastics equipment and sport, including sport balls’.

9 The grounds relied on in support of the opposition were, as regards the earlier international figurative mark No 582886, those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) and, as regards the earlier international figurative mark No 437626, that set out in Article 8(5) of Regulation No 207/2009.

10 On 31 March 2015, the Opposition Division rejected the opposition in its entirety. First, it rejected the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 on the ground that, with the exception of the goods in Class 7 and some of the goods in Classes 18, 25 and 28 for which use of the earlier international figurative mark No 582886 had not been proved by the applicant, the other goods covered by that...