Orders nº T-565/17 of Tribunal General de la Unión Europea, December 12, 2018

• Resolution Date: December 12, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-565/17

(EU trade mark - Opposition proceedings - Application for EU figurative mark Cheapflights - Referral of the trade mark application to the examiner for examination of the absolute grounds for refusal - Challenge by the proprietor of the earlier mark - Grounds of the contested decision containing an assessment of the validity of the earlier mark - Challenge by the proprietor of the earlier mark - Partial inadmissibility - Incidental submissions made on the basis on Article 8(3) of Regulation (EC) No 216/96 - Withdrawal of the appeal before the Board of Appeal - No need to adjudicate in part)

In Case T-565/17,

CheapFlights International Ltd, established in Speenoge (Ireland), represented by A. von Mühlendahl and H. Hartwig, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Momondo Group Ltd, established in London (United Kingdom),

ACTION brought against the decision of the Grand Board of Appeal of EUIPO of 1 June 2017 (R 1893/2011-G) relating to opposition proceedings between CheapFlights International and Momondo Group,

THE GENERAL COURT (Second Chamber),

composed of M. Prek (Rapporteur), President, F. Schalin and M.J. Costeira, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 18 August 2017,

having regard to the response lodged at the Court Registry on 6 November 2017,

having regard to the written questions put by the General Court to the parties and their answers to those questions lodged at the Court Registry on 29 June and 4 July 2018,

makes the following

Order

Background to the dispute

1 On 30 October 2003, the legal predecessor of Momondo Group Ltd, the other party to the proceedings before the Board of Appeal, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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 and services in respect of which registration was applied for are in Classes 9, 16, 35, 38, 39 and 41 to 44 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: ‘Computer hardware and computer software; computer software; computer software for natural language searches of databases; user guides and instruction manuals provided in electronic form’;

- Class 16: ‘Printed matter; catalogues, brochures and leaflets; periodicals and magazines; user and instruction manuals’;

- Class 35: ‘Compiling, storing, analysing and retrieving data and information; maintaining, indexing and electronically distributing information materials; creating indexes of information, websites and other information sources; creating indexes of information, sites and other resources available on a global computer network’;

- Class 38: ‘Providing and/or operating search engines; services allowing users of a global computer network to conduct searches for information on a wide variety of subject matters; providing an on-line link to information in the fields of entertainment, health, family, personal finance, shopping and travel’;

- Class 39: ‘Travel services, travel agency, booking and ticket services; car hire services, holiday transport, holiday travel reservation, information services for travellers and holidaymakers, preparation of reports relating to travel news for travellers, route planning services, provision of databases (travel information) for travellers, providing and/or operating booking engines for flight and travel, consultancy and advisory services for all the foregoing’;

- Class 41: ‘Holiday entertainment; provision of news for travellers; the organisation of competitions’;

- Class 42: ‘Computer services; custom design of question-answering functionality of world wide web sites, maintenance, monitoring and analysing performance of world wide web sites; computer programming; research and design services relating to computer software and computer hardware; weather report services, graphic design services, website design services, provision of databases (weather information) for travellers’;

- Class 43: ‘Hotel and accommodation services, arranging holiday accommodation, provision of databases (accommodation information) for travellers; providing and/or operating hotel booking engines’;

- Class 44: Medical advisory services for travellers’.

4 The trade mark application was published in Community Trade Marks Bulletin No 49/2004 of 6 December 2004.

5 On 2 March 2005, the applicant, CheapFlights International Ltd, brought opposition proceedings against registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based, in particular, on the earlier national figurative mark registered under the Irish number 227053, designating services in Classes 35, 36, 38, 39 and 41 to 44, reproduced below:

7 The ground relied upon in support of the opposition was the likelihood of confusion between the signs at issue.

8 On 22 June 2007, the Opposition Division rejected the opposition in respect of the goods and services in Classes 9, 16 and 35 and in respect of certain services in Class 42, namely ‘computer services; computer programming; research and design services relating to computer software and computer hardware; graphic design services’.

9 By contrast, the Opposition Division upheld the opposition in respect of the other services in Class 42, namely ‘custom design of question-answering functionality of world wide web sites, maintenance, monitoring and analysing performance of world wide web sites; weather report services, website design services, provision of databases (weather information) for travellers’, together with the services in Classes 38, 39, 41, 43 and 44.

10 On 21 August 2007, the other party to the proceedings before EUIPO brought an appeal against the decision of the Opposition Division in so far as the latter had allowed the applicant’s opposition.

11 By decision of 31 August 2009, the Fourth Board of Appeal of EUIPO upheld the appeal brought by the other party to the proceedings before EUIPO, on the ground that there was no likelihood of confusion between the marks at issue.

12 By application lodged at the Registry of the General Court on 16 November 2009, the applicant brought an action challenging the decision of the Fourth Board of Appeal of EUIPO of 31 August 2009, which was registered as Case T-460/09.

13 By judgment of 5 May 2011, CheapFlights International v OHIM - Cheapflights (Cheapflights) (T-460/09, not published, EU:T:2011:198), the Court upheld the plea alleging likelihood of confusion and annulled the decision of the Fourth Board of Appeal.

14 By decision of the Presidium of the Boards of Appeal of 20 September 2011, the case was remitted to the Grand Board of Appeal for further decision as Case R 1893/2011-G.

15 By interim decision of 4 July 2012 (‘the interim decision’), the Grand Board of Appeal referred the trade mark application to the examiner for re-examination with respect to absolute grounds for refusal.

16 By two decisions of 30 November 2016 and 14 February 2017, the examiner refused registration of the mark applied for in respect of the services in Classes 38, 39, 41, 43 and 44, together with the services in Class 42, that is, ‘custom design of question-answering functionality of world wide web sites, maintenance, monitoring and analysing performance of world wide web sites; weather report services, website design services, provision of databases (weather information) for travellers’, with regard to which the Opposition Division had upheld the opposition. The examiner also refused registration of the mark applied for in respect of ‘computer software; computer software; computer software for natural language searches of databases’ in Class 9, and in respect of ‘printed matter; catalogues, brochures and leaflets; periodicals and magazines’ in Class 16, with regard to which the Opposition Division had rejected the opposition.

17 By decision of 1 June 2017 (‘the contested decision’), in the first place, the Grand Board of Appeal inferred from the re-examination of the absolute grounds for refusal that the trade mark application had been rejected in respect of all services with regard to which the Opposition Division had upheld the opposition and that, accordingly, the opposition and appeal proceedings had become devoid of purpose and had to be closed.

18 In the second place, the Grand Board of Appeal declared that the trade mark application was eligible for registration in respect of ‘computer hardware; user guides and instruction manuals provided in electronic form’ in Class 9, ‘user and instruction manuals’ in Class 16, ‘compiling, storing, analysing and retrieving data and information; maintaining, indexing and electronically distributing information materials; creating indexes of information, websites and other information sources; creating indexes of information, sites and other resources available on a global computer network’ in Class 35, together with ‘computer services; computer programming; research and design services relating to computer software and computer hardware; graphic design services’ in Class 42.

Forms of order sought

19 The applicant claims that...