Judgments nº T-346/18 of Tribunal General de la Unión Europea, June 12, 2019

• Resolution Date: June 12, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-346/18

(EU trade mark - Opposition proceedings - Application for EU word mark VOGUE - Earlier EU word mark VOGA - Suspension of the administrative procedure - Rule 20(7)(c) of Regulation (EC) No 2868/95 (now Article 71(1) of Delegated Regulation (EU) 2018/625) - Rule 50(1) of Regulation No 2868/95) In Case T-346/18,

Advance Magazine Publishers, Inc., established in New York, New York (United States), represented by T. Alkin, Barrister, and N. Hine, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája 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

Enovation Brands, Inc., established in Aventura, Florida (United States), represented by R. Almaraz Palmero, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 March 2018 (Case R 259/2017-4) concerning opposition proceedings between Enovation Brands and Advance Magazine Publishers,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, I.S. Forrester (Rapporteur) and E. Perillo, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 29 May 2018,

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

having regard to the response of the intervener lodged at the Court Registry on 21 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

Background to the dispute

1 On 24 July 2013, the applicant, Advance Magazine Publishers, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) by virtue of 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 The mark for which registration was sought is the word sign VOGUE.

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 32, 33 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 32: ‘Beers; premixed beer-based alcoholic beverages’;

- Class 33: ‘Alcoholic beverages (except beers); cider; perry; wine; liqueurs; spirits; cocktails; pre-mixed alcoholic beverages (other than beer based)’;

- Class 43: ‘Services for providing drink; hotel, bar, wine-bar, café and restaurant services; nightclub services (provision of drink); catering; nursery and crèche services; rental of equipment for preparing and dispensing drink’.

4 On 9 October 2013, the predecessor in law of the intervener, Enovation Brands, Inc., 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.

5 The opposition was based on the earlier EU word mark VOGA, designating, inter alia, goods in Class 33.

6 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).

7 On 2 December 2016, the Opposition Division upheld the opposition in part and rejected the application in respect of the following goods and services:

- Class 32: ‘Beers; premixed beer-based alcoholic beverages’;

- Class 33: ‘Alcoholic beverages (except beers); cider; perry; wine; liqueurs; spirits; cocktails; pre-mixed alcoholic beverages (other than beer based)’;

- Class 43: ‘Catering services; bar, wine-bar, café and restaurant services; nightclub services (provision of drink); catering’.

8 On 2 February 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.

9 On 3 April 2017, the applicant filed a request for the suspension of the opposition proceedings on the ground that, on 31 March 2017, it filed with EUIPO an application for a declaration of invalidity of the mark VOGA on the basis, on the one hand, of Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001) and, on the other, of Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

10 In essence, in that action for a declaration of invalidity, the applicant argued that the intervener acted in bad faith when it filed the application for the trade mark under Article 52(1)(b) of Regulation No 207/2009. As to the grounds of invalidity provided for in Article 53(1)(a) of that regulation, the applicant submits that there was a conflict concerning the registration of the earlier mark in relation to the EU figurative trade mark reproduced below, which was registered under No 14273296 and covers services in Classes 41 and 43, and of the EU word mark VOGUE, which was registered under No 183756 for goods and services in Classes 9, 16, 25 and 41:

11 By decision of 27 March 2018 in Case R 259/2017-4 (‘the contested decision’), the Fourth Board of Appeal rejected the request for suspension and upheld the decision of the Opposition Division.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision in so far as it rejected the request for suspension;

- order EUIPO to pay the costs incurred by the applicant.

13 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs;

- in the alternative, annul the contested decision;

- order EUIPO to bear only its own costs.

14 The intervener contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs, including those incurred during the administrative procedure before EUIPO.

Law

15 The applicant raises a single plea in law...