Judgments nº T-655/17 of Tribunal General de la Unión Europea, April 11, 2019

• Resolution Date: April 11, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-655/17

(EU trade mark - Opposition proceedings - Application for the EU figurative mark ZARA TANZANIA ADVENTURES - Earlier EU word marks ZARA - Relative ground for refusal - Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) - Unfair advantage taken of the distinctive character or the repute of the earlier trade marks - Detriment to the distinctive character or the repute of the earlier trade marks)

In Case T-655/17,

Industria de Diseño Textil, SA (Inditex), established in Arteixo (Spain), represented by G. Marín Raigal, G. Macías Bonilla, P. López Ronda and E. Armero Lavie, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,

defendant,

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

Zainab Ansell and Roger Ansell, residing in Moshi (Tanzania),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 5 July 2017 (Joined Cases R 2330/2011-2 and R 2369/2011-2), relating to opposition proceedings between Industria de Diseño Textil, on the one hand, and Mrs Ansell and Mr Ansell, on the other hand,

THE GENERAL COURT (Seventh Chamber),

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

Registrar: E. Hendrix, Administrator,

having regard to the application lodged at the Court Registry on 25 September 2017,

having regard to the response of EUIPO lodged at the Court Registry on 24 January 2018,

further to the hearing on 22 November 2018,

gives the following

Judgment

Background to the dispute

1 On 27 April 2009, Mrs Zainab Ansell and Mr Roger Ansell 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 in green and yellow:

3 The services in respect of which registration was sought are in Classes 39, 41 and 43 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 39: ‘Travel and tourism services; arrangement of vacations; arranging, provision and conducting of safaris, expeditions, tours and cruises; transfer, transport and escorting of travellers and passengers; sightseeing (tourism); railway, river and air transport; reservation services relating to transport, travel, tourist activities and vacations; rental of vehicles; booking of seats; information services relating to airtravel, air transport, timetables, fares, schedules, connecting transport and tourist information; providing information concerning travel and travel-related topics; providing guidebooks, travel maps, city directories and listing for use by travellers available electronically via a global computer network, providing travel information over computer networks and global communication networks’;

- Class 41: ‘Educational and training services relating to wildlife, ecology, African geography and history and relating to the organisation and conduct of safaris, tours, cruises and transport; entertainment services for tourists and holidaymakers; organisation of activity sports and cultural events for tourists and holidaymakers; arranging and conducting conferences, symposiums, exhibitions and seminars relating to wildlife, ecology, geology, topography and ethnic cultural matters; advice, information and consultancy services relating to all the aforementioned services’;

- Class 43: ‘Travel agency services for booking accommodation; hotel services; resort and lodging services; provision of safari, tour and temporary accommodation; restaurant, catering and bar services; provision of food and drink; booking and reservation services for hotel and holiday accommodation; reservation and information services; advice, information and consultancy services relating to all the aforementioned services’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2009/031 of 17 August 2009.

5 On 31 August 2009, the applicant, Industria de Diseño Textil, SA (Inditex), 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 services referred to in paragraph 3 above.

6 The opposition was based on the following earlier rights (‘the earlier marks’):

- the earlier EU word mark ZARA, which was registered on 3 January 2001 under the number 112 755 in respect of, inter alia, ‘clothing, footwear [and] headgear’ in Class 25, ‘services in relation to the transport and distribution of goods, packaging and storage of merchandise, in particular, articles of clothing, shoes and accessories, perfumery and cosmetics’ in Class 39 and ‘providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes; rental of evening dress, uniforms and clothing, industrial design, dress designing, design of interior decor, knitting machine rental, fashion information, technical and chemical research, textile testing’ in Class 42;

- the earlier EU word mark ZARA, which was registered on 13 October 2005 under the number 732 958 in respect of ‘store services; commercial or industrial management assistance by the issuing and administration of charge cards; business management services; business administration services; advertising, including advertising services undertaking the distribution of advertising and commercial prospectuses and pamphlets, either directly or by mail, as well as the distribution of product samples’ in Class 35 and ‘providing of education; training; entertainment [and] sporting and cultural activities’ in Class 41.

7 The grounds relied on in support of the opposition were 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).

8 On 20 September 2011, in the first place, the Opposition Division partially upheld the opposition brought on the basis of Article 8(1)(b) of Regulation No 207/2009, namely in respect of all the services in Classes 41 and 43 and all the services in Class 39, except for ‘railway, river and air transport [and] rental of vehicles’. In the second place, the Opposition Division rejected the opposition brought on the basis of Article 8(5) of that regulation in respect of the services ‘railway, river and air transport [and] rental of vehicles’ in Class 39.

9 Both the applicant (Case R 2330/2011-2) and Mrs and Mr Ansell (Case R 2369/2011-2) filed notices of appeal with EUIPO, on 11 and 16 November 2011 respectively, pursuant to 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.

10 On 24 October 2011, Mrs and Mr Ansell filed an application for revocation of the earlier word mark ZARA, registered under the number 112 755, in respect of the services in Classes 39 and 42. The appeal proceedings were suspended until a final decision was given regarding the application for revocation. On 30 April 2013, the Cancellation Division revoked the earlier mark in respect of ‘services in relation to the transport and distribution of goods, packaging and storage of merchandise, in particular, articles of clothing, shoes and accessories, perfumery and cosmetics’ in Class 39 and in respect of the services ‘providing of food and drink [and] temporary accommodation’ in Class 42. The decision became final on 26 October 2016.

11 By decision of 5 July 2017 (‘the contested decision’), the cases having been joined, the Second Board of Appeal of EUIPO, first, dismissed the applicant’s appeal (Case R 2330/2011-2) and, secondly, partially upheld Mrs and Mr Ansell’s appeal (Case R 2369/2011-2). Consequently, the Board of Appeal allowed the mark applied for to proceed to registration in respect of all the services in Classes 39 and 43, as described in paragraph 3 above.

12 As regards more specifically the ground of opposition based on Article 8(5) of Regulation No 207/2009, the Board of Appeal stated, first, that the marks at issue had to be considered to be similar overall; secondly, that the earlier marks had a reputation for ‘clothing, footwear [and] headgear’ in Class 25 and ‘store services’ in Class 35; thirdly, that the applicant had not sufficiently proved either that the use of the sign applied for might give rise to a risk of unfair advantage being taken of the repute of the earlier marks or that it might be detrimental to the distinctive character or the repute of the earlier marks. The Board of Appeal therefore found that the necessary conditions for the application of Article 8(5) of Regulation No 207/2009 were not satisfied in the case before it.

Forms of order sought

13 The applicant claims that the Court should:

- partially annul the contested decision and reject the application for registration of the mark ZARA TANZANIA ADVENTURES in respect of the services in Classes 39 and 43 covered by that application;

- order EUIPO, Mrs and Mr Ansell to bear the costs, including the costs necessarily incurred in the opposition proceedings before EUIPO and the proceedings before the Second Board of Appeal.

14 During the hearing, the applicant stated that it was no longer requesting the Court to rule on the costs...