Judgments nº T-46/17 of Tribunal General de la Unión Europea, December 14, 2018

• Resolution Date: December 14, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-46/17

(EU trade mark - Opposition proceedings - International registration designating the European Union - Figurative mark Pet Cuisine - Earlier EU figurative mark The Pet CUISINE alimento para mascotas felices Genial - 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-46/17,

TDH Group, established in Brussels (Belgium), represented by D. Chen, lawyer,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Comercial de Servicios Agrigán, SA, established in Huesca (Spain),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 10 November 2016 (Case R 685/2016-2), relating to opposition proceedings between Comercial de Servicios Agrigán and TDH Group,

THE GENERAL COURT (Fourth Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 26 January 2017,

having regard to the response lodged at the Court Registry on 12 April 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 2 and 8 May 2018,

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 The applicant, TDH Group, submitted to the Office Benelux de la propriété intellectuelle (Benelux Office for Intellectual Property; ‘BOIP’) an application for international registration of the figurative sign Pet Cuisine, pursuant to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted in Madrid (Spain) on 27 June 1989 (OJ 2003 L 296, p. 22). That application for an international registration was based on registration No 946758, effected on 1 January 2014 in Benelux. It designated, inter alia, the European Union as the territory in which protection was sought. Registration in the register of the International Bureau of the World Intellectual Property Organisation (WIPO) was carried out on 7 May 2014, under number 1203373 and is dated 7 April 2014 (‘the international registration’).

2 On 22 May 2014, the international registration was notified 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)).

3 The sign covered by the international registration is reproduced below:

4 The goods in respect of which registration of the mark was sought fall within Class 31 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: ‘Seeds and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt’.

5 The international registration was published in the Community Trade Marks Bulletin No 90/2014 of 16 May 2014.

6 On 17 November 2014, Comercial de servicios Agrigán, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the international registration, in so far as it designated the territory of the European Union, in respect of all the goods in Class 31, referred to in paragraph 4 above.

7 The opposition was based on the following earlier rights:

- the EU figurative mark registered on 14 November 2013 under number 11911955 for ‘foodstuffs for animals’ in Class 31, for ‘wholesaling, retailing in shops and via global computer networks of foodstuffs for animals’ in Class 35 and for ‘warehousing, transport and distribution of food for animals’ in Class 39, reproduced below:

- the EU figurative mark registered on 14 November 2013 under number 11912052 for ‘foodstuffs for animals’ in Class 31, for ‘wholesaling, retailing in shops and via global computer networks of foodstuffs for animals’ in Class 35 and for ‘warehousing, transport and distribution of food for animals’ in Class 39 reproduced below:

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 19 February 2016, the Opposition Division upheld in part the opposition based on the earlier mark The Pet CUISINE alimento para mascotas felices Genial and refused protection in the European Union of the sign covered by the international registration for the goods in Class 31, corresponding to the following description: ‘seeds and agricultural products, not included in other classes; seeds, natural plants; foodstuffs for animals, malt’. Furthermore, the Board of Appeal considered, in essence, that the partial rejection of the opposition for the other goods in Class 31, covered by the international registration and referred to in paragraph 4 above, was not affected by the other earlier mark on which the opposition was based, namely the EU figurative mark The Pet CUISINE alimento para mascotas felices Sibarity, since that mark covered the same goods as the earlier mark The Pet CUISINE alimento para mascotas felices Genial.

10 On 12 April 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).

11 By decision of 10 November 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

12 In the first place, in paragraph 16 of the contested decision, the Board of Appeal noted that the relevant territory for the assessment of the likelihood of confusion was that of the European Union.

13 In the second place, in paragraphs 17 and 18 of the contested decision, it held, in essence, that the relevant public consisted of pet owners who are part of the general public of the European Union having an average level of attention.

14 In the third place, in paragraphs 19 to 23 of the contested decision, it considered, in essence, that the goods in Class 31, covered by the international mark, for which the Opposition Division had found that there was a likelihood of confusion, were similar or identical to the goods in the same class, covered by the earlier mark The Pet CUISINE alimento para mascotas felices Genial.

15 In the fourth place, in paragraphs 26 to 30 of the contested decision, it stated that the expression ‘pet cuisine’, represented in the sign covered by the international registration and in the earlier mark The Pet CUISINE alimento para mascotas felices Genial (‘the marks at issue’), was the dominant and most distinctive element of the marks at issue, even if that expression is understood by a part of the relevant public.

16 In the fifth place, in paragraphs 31 to 34 of the contested decision, it considered that, in essence, the marks at issue were visually, phonetically and conceptually similar for the part of the relevant public which understands the English expression ‘pet cuisine’ and that those marks were visually and phonetically similar for the part of the relevant public which does not understand the meaning of their word elements.

17 In the sixth place, in paragraph 34 of the contested decision, the Board of Appeal found that, in essence, there was a likelihood of confusion between the marks at issue, given the identity or similarity of the goods at issue, the distinctive and dominant character of the term ‘pet cuisine’, which is present in each of the marks at issue, as well as the visual, phonetic or even conceptual similarity of those marks.

18 In the seventh place, in paragraphs 36 and 37 of the contested decision, since the Board of Appeal upheld the opposition on the basis of the earlier mark The Pet CUISINE alimento para mascotas felices Genial and confirmed the decision of the Opposition Division, it took the view that it was not necessary to examine the merits of the opposition based on EU figurative mark The Pet CUISINE alimento para mascotas felices Sibarity.

Forms of order sought

19 The applicant claims that the Court should:

- principally, alter the contested decision and, accordingly, hold that the appeal before the Board of Appeal is well founded and reject the opposition in its entirety;

- in the alternative, annul the contested decision and the decision of the Opposition Division of 19 February 2016;

- order EUIPO to pay the costs of the proceedings.

20 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

Admissibility of the claims and evidence submitted for the first time before the Court

21 EUIPO considers, in essence, that the claims and evidence referred to in paragraphs 8 and 9 of the application, seeking to demonstrate that the purchase of pet food is related to health and potentially hazardous, were submitted for the first time before the Court and are, for that reason, inadmissible.

22 The applicant claims that the plea of inadmissibility raised by EUIPO should be rejected.

23 As a preliminary point, it must be noted that, before the Board of Appeal, the applicant contested the Opposition Division’s assessment that the...