Judgments nº T-34/18 of Tribunal General de la Unión Europea, February 14, 2019
| Resolution Date | February 14, 2019 |
| Issuing Organization | Tribunal General de la Unión Europea |
| Decision Number | T-34/18 |
(EU trade mark - Opposition proceedings - Application for EU figurative mark KALON AL CENTRO DELLA FAMIGLIA - Earlier EU word mark CALOON - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-34/18,
Giove Gas Srl, established in Tarquinia (Italy), represented by A. Bergonzini and F. Dinelli, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Compagnie des gaz de pétrole Primagaz, established in Paris (France), represented by D. Régnier, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 November 2017 (Case R 1271/2017-2), relating to opposition proceedings between Compagnie des gaz de pétrole Primagaz and Giove Gas,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 24 January 2018,
having regard to the response of EUIPO lodged at the Court Registry on 1 August 2018,
having regard to the response of the intervener lodged at the Court Registry on 1 August 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
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Background to the dispute
1 On 28 October 2015, the applicant, Giove Gas Srl, 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 and services in respect of which registration was sought are in Classes 4, 11, 35 and 38 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, as regards Class 11 specifically, to the following description: ‘Regulating and safety accessories for water and gas installations; food and beverage cooking, heating, cooling and treatment equipment; heating, ventilating, and air conditioning and purification equipment (ambient); refrigerating and freezing equipment; burners, boilers and heaters; flues and installations for conveying exhaust gases; lighting and lighting reflectors’.
4 The trade mark application was published in Community Trade Marks Bulletin No 215/2015 of 12 November 2015.
5 On 12 February 2016, the intervener, Compagnie des gaz de pétrole Primagaz, 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 referred to in paragraph 3 above.
6 The opposition was based on the earlier EU word mark CALOON designating goods and services in Classes 4, 11, 35, 37, 39, 40 and 42, corresponding, as regards Class 11 specifically, to the following description: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus and installations; freezers; pocket searchlights; coffee machines, electric; cookers; lighting apparatus for vehicles; heating or air conditioning installations for vehicles; air and water purifying apparatus and machines; sterilisers’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 On 26 April 2017, the Opposition Division upheld the opposition.
9 On 14 June 2017, the applicant filed a notice of appeal with EUIPO under 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, in so far as it upheld the opposition in respect of the goods in Class 11.
10 By decision of 27 November 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the grounds, first, that the goods at issue in Class 11 were identical or highly similar and, secondly, that the marks at issue were similar, inter alia, on account of the fact that, for the German-speaking part of the relevant public, the word elements ‘caloon’, in the earlier mark, and ‘Kalon’, in the mark applied for, are phonetically identical, and the fact that the phrase ‘al centro della famiglia’, in the mark applied for, was likely to be disregarded by that public due to the small size of the characters used.
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Forms of order sought
11 The applicant claims that the Court should:
- alter all the provisions of the contested decision;
- following rejection of the opposition, order registration of the figurative mark in favour of the applicant for all the classes stated in the original application, particularly Class 11;
- obtain all relevant acts and procedural documents relating to the proceedings before the Opposition Division and the Board of Appeal, whilst reserving the right to adopt further measures of inquiry after hearing the parties.
12 EUIPO and the intervener contend that the Court should:
- dismiss the action;
- order the applicant to pay the costs.
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Law
A. The applicant’s third head of claim
13 By its third head of claim, the applicant requests that the Court obtain from EUIPO all ‘relevant’ documents relating to the proceedings before the Opposition Division and the Board of Appeal.
14 However, it should be noted that, in accordance with Article 178(5) of the Rules of Procedure of the General Court, EUIPO forwarded to the Court the file relating to the proceedings before the Board of Appeal, which includes the procedural documents that went before the Opposition Division. Therefore there is no need to adjudicate on the third head of claim.
B. The applicant’s first and second heads of claim
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Preliminary observations
15 The view must be taken that, although the applicant’s first head of claim formally relates to the alteration of the contested decision, it is clear from the content of the application that, by the present action, the applicant seeks, essentially, partial annulment of the contested decision on the ground that the Board of Appeal was wrong to consider that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in relation to ‘pellet stoves’. The applicant states in the application that ‘the dispute is limited to certain specific goods (pellet stoves) that are included under apparatus for heating’ in Class 11.
16 However, it must be noted that none of the goods designated by the mark applied for correspond to the description ‘pellet stoves’.
17 In those circumstances, as the applicant considers that pellet stoves are included under ‘apparatus for heating’ in Class 11 and the list of goods in that class contained in the EU trade mark application includes ‘heating equipment’, the applicant’s first head of claim must be interpreted as seeking partial annulment of the contested decision in so far as the appeal against the Opposition Division’s decision was dismissed in respect of such heating equipment.
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The applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
18 In support of its first and second heads of claim, the applicant relies essentially on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
19 EUIPO and the intervener dispute the applicant’s arguments.
20 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
21 According to the case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. Pursuant to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the marks and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the marks and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
22 When the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a...
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