Judgments nº T-162/18 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-162/18

(EU trade mark - Opposition proceedings - Application for EU figurative mark ALTUS - Earlier national word marks ALTOS - Revocation proceedings in respect of earlier marks initiated before national authorities - Likelihood of confusion - Suspension of the administrative proceedings - Rule 20(7)(c) of Regulation (EC) No 2868/95 (now Article 71(1) of Delegated Regulation (EU) 2018/625))

In Case T-162/18,

Beko plc, established in Watford (United Kingdom), represented by G. Tritton, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

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

Acer, Inc., established in Taipei (Taiwan),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 December 2017 (Case R 1991/2016-5) relating to opposition proceedings between Acer and Beko,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 7 March 2018,

having regard to the response lodged at the Court Registry on 25 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 On 6 December 2007, the applicant, Beko plc, lodged 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 in respect of which registration was sought are in Classes 7, 9 and 11 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.

4 The trade mark application was published in Community Trade Marks Bulletin No 032/2008 of 11 August 2008.

5 On 11 November 2008, Acer, Inc. lodged an opposition, under Article 42 of Regulation No 40/94 (now Article 46 of Regulation 2017/1001), against the registration of the mark applied for in respect of goods in Class 9. The opposition was based on 22 earlier marks containing the word ‘altos’.

6 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation 2017/1001).

7 By decision of 27 June 2013 (‘the decision of 27 June 2013’), the Opposition Division partially upheld the opposition in respect of part of the goods covered by the mark applied for on the basis of two earlier national marks, namely the Maltese word mark ALTOS, registered on 25 February 2004 under the number 41702, which designates goods in Class 9 (‘the earlier Maltese mark’), and the Slovenian word mark ALTOS, registered on 31 August 2004 under the reference Z-200470440, which designates goods in Class 9 of the Nice Agreement (‘the earlier Slovenian mark’).

8 On 27 August 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of 27 June 2013.

9 In its statement of grounds for the appeal, which was filed with the Board of Appeal on 25 October 2013, the applicant requested that the proceedings before the Boards of Appeal be suspended pending a decision in the proceedings between itself and Acer before, firstly, the Okrožno sodišče v Ljubljani (Regional Court, Llubljana, Slovenia) in Case IV Pg 5759/2013, concerning a revocation action brought by the applicant against the earlier Slovenian mark, and, secondly, the Qorti Ċivili (Civil Court, Malta) in Case 88/2014 concerning a revocation action brought by the applicant against the earlier Maltese mark.

10 By decision of 19 June 2014 of the Okrožno sodišče v Ljubljani (District Court, Llubljana), Acer’s rights were revoked for lack of genuine use of the earlier Slovenian mark (with effect from 12 July 2014).

11 By decision of 15 July 2014 by the Qorti Ċivili (Civil Court), Acer’s rights were revoked for lack of genuine use of the earlier Maltese mark (with effect from 24 February 2008).

12 By decision of 31 August 2015 (‘the decision of 31 August 2015’), the Fifth Board of Appeal annulled the Opposition Division’s decision on the ground that both earlier marks at issue had been declared invalid during the proceedings and remitted the case to the Opposition Division for examination of the opposition based on the other earlier rights relied on in support of that opposition.

13 By decision of 2 September 2016 (‘the decision of 2 September 2016’), the Opposition Division partially upheld the opposition for some of the goods covered by the mark applied for on the ground that there was a likelihood of confusion, for those goods, between the mark applied for and the earlier Slovak word mark ALTOS, registered on 9 June 2005 under number 209958, which designates goods in Class 9, and was included among the 22 marks relied on in the opposition (‘the earlier Slovak mark’).

14 On 2 November 2016, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of 2 September 2016.

15 On 3 January 2017, the applicant requested, in its statement of grounds for appeal, that the proceedings be suspended in accordance with Rule 20(7)(c) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (now Article 71(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018, supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), on the ground that it intended to initiate revocation proceedings against the earlier Slovak mark before the Slovak Industrial Property Office (‘the competent national authority’).

16 On 31 March 2017, the Board of Appeal invited Acer to provide evidence of the renewal of 12 earlier marks on which the opposition was based, including the earlier Slovak mark. Acer complied with that request on 18 April 2017.

17 On 11 May 2017, the applicant provided the Board of Appeal with a copy and an English translation of the request for revocation of the earlier Slovak mark which it had introduced on 4 April 2017 before the competent national authority.

18 By decision of 13 December 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO firstly rejected the suspension request. Next, it found that there was a likelihood of confusion between the mark applied for and the earlier Slovak mark. Finally, the Board of Appeal found that the other earlier rights on which the opposition was based could not result in a different outcome. On those grounds, the Board of Appeal upheld the decision of 2 September 2016 and dismissed the appeal.

19 By decision of 2 March 2018, attached to the application, the competent national authority revoked Acer’s rights in the earlier Slovak mark, as of 4 April 2017, due to lack of genuine use of that mark on the Slovak territory during the five year period preceding the beginning of the revocation proceedings.

Forms of order sought

20 The applicant claims that the Court should:

- annul the contested decision and remit the matter back to EUIPO to reconsider the request for suspension; and/or

- orders the suspension of the proceedings;

- order EUIPO to pay the costs.

21 EUIPO contends that the Court should:

- ‘dismiss the application for annulment if the Board of Appeal did not make a manifest error of assessment when deciding on the suspension of the opposition proceedings’; or

- ‘uphold the application for annulment if the Board of Appeal made a manifest error of assessment when deciding on the suspension of the opposition proceedings’.

Law

Admissibility of the head of claim requesting the Court to remit the matter back to EUIPO and/or order the suspension of the proceedings.

22 EUIPO argues that the applicant’s claims seeking an order from the Court remitting the matter to EUIPO and/or suspending the proceedings are inadmissible in so far ask they ask the Court to issue directions to EUIPO.

23 It must be noted, in that regard, that it is clear from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the Courts of the European Union. It is therefore not for the Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see judgment of 11 July 2007, El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, EU:T:2007:219, paragraph 20 and the case-law cited). Therefore, the applicant’s first head of claim, inasmuch as it seeks an order from the Court remitting the...