Judgments nº T-276/17 of Tribunal General de la Unión Europea, July 12, 2019

Resolution DateJuly 12, 2019
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-276/17

(EU trade mark - Invalidity proceedings - EU figurative mark Tropical - Earlier national word mark TROPICAL - Relative ground for refusal - Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) - Similarity of the goods - Likelihood of confusion - Coexistence of the marks)

In Case T-276/17,

Tadeusz Ogrodnik, residing in Chorzów (Poland), represented by A. von Mühlendahl and H. Hartwig, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO having been

Aviário Tropical, SA, established in Loures (Portugal),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 February 2017 (Case R 2125/2016-1), relating to invalidity proceedings between Aviário Tropical and Mr Ogrodnik,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 8 May 2017,

having regard to the response lodged at the Court Registry on 12 July 2017,

having regard to the written questions put by the Court to the parties and their answers to those questions, which were lodged at the Court Registry on 8 June 2018,

further to the hearing on 11 September 2018,

gives the following

Judgment

Background to the dispute

1 On 31 October 2003, the applicant, Mr Tadeusz Ogrodnik, 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:

Image not found

3 The goods in respect of which registration was sought are in Classes 5 and 31 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 5: ‘Veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation’;

- Class 31: ‘Food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals, food for fauna containing nutritives, products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals; excluding birdfeed and bird treats’.

4 On 6 September 2004, the EU trade mark application was published in Community Trade Marks Bulletin No 36/2004. On 7 September 2007, the mark applied for was registered under number 3435773.

5 On 21 November 2011, Aviário Tropical, SA, filed an application with EUIPO for a declaration that the contested mark was invalid in respect of all the goods for which it had been registered.

6 In support of its application for a declaration of invalidity, Aviário Tropical invoked the following earlier national word mark:

TROPICAL

7 The ground for invalidity relied on in support of that application was that referred to in 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) of that regulation (now Article 8(1)(b) of Regulation 2017/1001).

8 Following a request from the applicant, Aviário Tropical submitted documents intended to prove genuine use of the earlier mark.

9 On 15 July 2013, the Cancellation Division rejected the application for a declaration of invalidity in its entirety, finding that Aviário Tropical had not proved genuine use of the earlier mark during the relevant periods in respect of all of the goods for which that mark was registered.

10 On 4 October 2013, Aviário Tropical filed an 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 the Cancellation Division.

11 By decision of 22 September 2014, the Fourth Board of Appeal of EUIPO allowed that appeal and upheld the application for a declaration of invalidity in respect of all of the goods covered by the contested mark (‘the first decision of the Board of Appeal’). In particular, it held that Aviário Tropical had proved genuine use of the earlier mark in Portugal as regards, at the very least, ‘food for fish’ in Class 31 and that it was unnecessary to examine whether the earlier mark had been put to genuine use in respect of the other goods which it covered, namely live fish and live plants. The Board of Appeal also took the view that there was a likelihood of confusion with the earlier mark.

12 On 4 December 2014, the applicant brought an action, pursuant to Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), against the first decision of the Board of Appeal.

13 By its judgment of 21 July 2016, Ogrodnik v EUIPO - Aviário Tropical (Tropical) (T-804/14, not published, EU:T:2016:431), the Court annulled the first decision of the Board of Appeal. After endorsing the Board of Appeal’s finding that it is sufficient to note that genuine use of the earlier mark had been established in respect of ‘food for fish’, and the finding that ‘food for fish’ in Class 31 covered by the earlier mark and food for fauna in the same category covered by the contested mark were identical, the Court held that the Board of Appeal had made three errors in that decision. In the first place, it held that there was an error of assessment regarding some of the goods in Class 31 covered by the contested mark, since ‘products and preparations for the cultivation of plants and aquarium plants’ and ‘products and preparations for the breeding of birds, reptiles and amphibians’, covered by that mark, could not be identical to ‘food for fish’ covered by the earlier mark. In the second place, as regards the contested goods in Class 5, the Court held that the criteria followed by the Board of Appeal could not have led it to the conclusion that there was an average degree of similarity between the goods concerned. In the third place, the Court held that the first decision of the Board of Appeal was vitiated by a failure to state reasons in so far as the Board of Appeal failed to adjudicate on the applicant’s arguments relating to the coexistence of the marks at issue. As a result of that failure, the Court indicated that it was not able to exercise its power of alteration.

14 Following the judgment of 21 July 2016, Tropical (T-804/14, not published, EU:T:2016:431), the case was referred back to EUIPO. By decision of 14 February 2017 (‘the contested decision’), the First Board of Appeal annulled the decision of the Cancellation Division and declared that the contested mark was invalid for all of the goods concerned In particular, it found as follows:

- in the judgment of 21 July 2016, Tropical (T-804/14, not published, EU:T:2016:431), the Court confirmed that the relevant public is that of Portugal, that it is made up of both the general public and business customers wishing to install an aquarium or start breeding fish, and that that public displays an average, or above average, level of attentiveness;

- as regards the comparison of the goods, the Court confirmed that food for fauna in Class 31 covered by the contested mark was identical to ‘food for fish’ in Class 31 covered by the earlier mark; as regards ‘products and preparations for the cultivation of plants and aquarium plants’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for flora cultivation’ in Class 5, covered by the contested mark, the latter are similar to a low degree to ‘food for fish’ in Class 31 covered by the earlier mark; on the other hand, ‘products and preparations for the breeding of birds, reptiles and amphibians’ (the contested goods in Class 31), ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics’, for ‘terraristics’ and for ‘fauna breeding’, in Class 5, are similar to an average degree to ‘food for fish’ in Class 31 covered by the earlier mark. Consequently, the contested goods in Classes 5 and 31 were in part identical and in part similar to ‘food for fish’ covered by the earlier mark;

- in view of the fact that the signs were on the whole similar, a likelihood of confusion could not be excluded for any of the contested goods, even for those having only a low degree of similarity with the goods covered by the earlier mark. Furthermore, consumers might think that the contested mark was another version of the earlier mark to which a figurative element had been added. It therefore had to be confirmed that there was a likelihood of confusion;

- the evidence provided by the applicant in order to demonstrate the peaceful coexistence of the two marks over several years did not demonstrate that that coexistence was based on the absence of a likelihood of confusion. Consequently, the argument based on the peaceful coexistence of the marks could not influence the assessment of the likelihood of confusion in the present case.

Forms of order sought

15 The applicant claims that the Court should:

- annul the contested decision;

- dismiss the appeal brought by the other party against the...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT