Judgments nº T-412/18 of Tribunal General de la Unión Europea, July 12, 2019

• Resolution Date: July 12, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-412/18

(EU trade mark - Invalidity proceedings - EU figurative mark mobile.ro - Earlier national figurative mark mobile - Genuine use of the earlier mark - Article 18 of Regulation (EU) 2017/1001 - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation 2017/1001) In Case T-412/18,

mobile.de GmbH, established in Dreilinden (Germany), represented by T. Lührig, lawyer,

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

Droujestvo S Ogranichena Otgovornost ‘Rezon’, established in Sofia (Bulgaria), represented by M. Yordanova-Harizanova and V. Grigorova, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 29 March 2018 (Case R 111/2015-1), relating to invalidity proceedings between Droujestvo S Ogranichena Otgovornost ‘Rezon’ and mobile.de,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias (Rapporteur), President, I. Labucka and I. Ulloa Rubio, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 2 July 2018,

having regard to the response of EUIPO lodged at the Court Registry on 4 December 2018,

having regard to the response of the intervener lodged at the Court Registry on 22 November 2018,

further to the hearing on 3 April 2019,

gives the following

Judgment

Background to the dispute

1 On 2 July 2008, the applicant, mobile.de GmbH, 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:

3 The services in respect of which registration was sought are in, inter alia, Classes 35 and 42 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 to the following description:

- Class 35: ‘Gathering of information’;

- Class 42: ‘Providing internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories’.

4 The trade mark at issue was registered on 26 January 2010.

5 On 16 May 2013, the intervener, Droujestvo S Ogranichena Otgovornost ‘Rezon’, filed an application with EUIPO for a declaration of invalidity of the mark at issue in respect of the services referred to in paragraph 3 above.

6 In support of its application for a declaration of invalidity, the intervener relied on the Bulgarian figurative mark registered on 20 April 2005 (‘the earlier national mark’) and reproduced below:

7 The earlier national mark was registered for services in, inter alia, Classes 35 and 42 of the Nice Agreement and corresponding to the following description:

- Class 35: ‘Advertising; business management; business administration; office function’;

- Class 42: ‘Scientific and technological services and research and related design services; industrial analysis and research services; design and development of computer hardware and software; legal services’.

8 Before the Cancellation Division, the applicant requested that the intervener furnish proof of use of the earlier national mark, in accordance with Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation 2017/1001) and Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 10 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)), in respect of the services referred to in paragraph 7 above. In view of the fact that the earlier national mark had been registered on 20 April 2005 and that the application for a declaration of invalidity had been made on 16 May 2013, the Cancellation Division requested the intervener to submit proof of use of the earlier national mark in Bulgaria for the period from 16 May 2008 to 15 May 2013 (‘the reference period’).

9 By decision of 19 November 2014, the Cancellation Division rejected the application for a declaration of invalidity on the ground that there was no similarity between the services covered by the conflicting marks and that, consequently, there was no likelihood of confusion.

10 On 12 January 2015, the intervener 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 the Cancellation Division.

11 By decision of 29 March 2018 (‘the contested decision’), the Board of Appeal annulled the decision of the Cancellation Division and declared the mark at issue invalid in respect of the services in Classes 35 and 42 referred to in paragraph 3 above.

12 In particular, the Board of Appeal stated, first of all, that proof of use of the earlier national mark submitted by the intervener refers to the word sign mobile.bg and to the figurative signs reproduced below:

13 According to the Board of Appeal, those signs differ from the earlier national mark in elements which do not alter the distinctive character of the latter, within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

14 Next, the Board of Appeal took the view that the evidence submitted by the intervener demonstrated genuine use of the earlier national mark within the meaning of Article 64(2) of Regulation 2017/1001, but only for advertising services in connection with vehicles.

15 Finally, after finding that there are significant similarities between the advertising services in connection with vehicles covered by the earlier national mark and the services covered by the contested sign (see paragraph 3 above) and between the signs at issue, the Board of Appeal found that there was a likelihood of confusion for the average consumer in Bulgaria comprising the relevant public and thus annulled the mark at issue in respect of the services in Classes 35 and 42 referred to in paragraph 3 above.

Forms of order sought

16 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

17 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

18 In support of its action, the applicant raises four pleas in law, alleging infringement of:

- point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, read in conjunction with Article 64(2) and (3) of that regulation;

- Article 19(2) and Article 10(3) 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), read in conjunction with Article 64(2) and (3) of Regulation 2017/1001;

- Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) and (2)(a)(ii) of that regulation;

- Article 4(3) TEU, read in conjunction with Article 59(1)(b) and Article 61(2) of Regulation 2017/1001.

The first plea in law, alleging infringement of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, read in conjunction with Article 64(2) and (3) of that regulation

19 The applicant submits, first of all, that, by applying point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 in order to assess the use of the earlier national mark, the Board of Appeal erred in law. According to the applicant, that provision concerns only genuine use of EU trade marks. On the other hand, the use of national marks is to be assessed according to the relevant national law.

20 That argument cannot be accepted. It is true that, according to Article 18(1) of Regulation 2017/1001, if, within a period of 5 years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of 5 years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.

21 Correspondingly, according to Article 64(2) of Regulation 2017/1001, if the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, is to furnish proof that, during the period of 5 years preceding the date of the application for a declaration of invalidity, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which the proprietor of that earlier trade mark cites as justification for his application for a declaration of invalidity, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for not less than 5 years. Furthermore, according to that provision, if at the date on which the EU trade mark application was filed or at the priority date of the EU trade mark application, the earlier EU trade mark had been registered for not less than 5 years, the proprietor of the earlier EU trade mark is to furnish proof that the conditions set out in Article 47(2) of Regulation 2017/1001 were satisfied at that date.

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