Judgments nº T-6/08 of The General Court, March 25, 2010

• Resolution Date: March 25, 2010
• Issuing Organization: The General Court
• Decision Number: T-6/08

In Joined Cases T‑5/08 to T‑7/08,

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. von Mühlendahl, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by R. Pethke, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Master Beverage Industries Pte Ltd, established in Singapore, represented by N. Clarembeaux, D. Vervaet and P. Maeyaert, lawyers,

ACTIONS brought against three decisions of the Second Board of Appeal of OHIM of 1 October 2007 (Cases R 563/2006‑2, R 568/2006‑2 and R 1312/2006‑2) concerning opposition proceedings between Société des produits Nestlé SA and Master Beverage Industries Pte Ltd,

THE GENERAL COURT (Eighth Chamber),

composed of M.E. Martins Ribeiro, President, S. Papasavvas and A. Dittrich (Rapporteur), Judges,

Registrar: N. Rosner, Administrator,

having regard to the applications lodged at the Court Registry on 4 January 2008,

having regard to the response of OHIM lodged at the Court Registry on 27 June 2008,

having regard to the response of the intervener lodged at the Court Registry on 30 June 2008,

having regard to the order of 23 May 2008 joining cases T-5/08, T‑6/08 and T‑7/08,

further to the hearing on 30 April 2009,

gives the following

Judgment

Background to the dispute

1 On 7 May 2003 the intervener, Master Beverage Industries Pte Ltd, filed three Community trade mark applications with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 Community trade mark (OJ 2009 L 78, p. 1)).

2 The three marks for which registration was sought (together ‘the marks applied for’) are the following figurative signs:

– in Case T‑5/08 (Community trade mark application No 3157005), the light brown, dark brown, red, yellow, gold, white, silver and blue Golden Eagle sign (‘mark No 1’) represented as follows:

– in Case T‑6/08 (Community trade mark application No 3156924), the dark brown, light brown, red, gold, white and yellow Golden Eagle Deluxe sign (‘mark No 2’) represented as follows:

– in Case T‑7/08 (Community trade mark application No 3157534), the dark brown, light brown, red, gold, white and yellow Golden Eagle Deluxe sign (‘mark No 3’) represented as follows:

3 The goods in respect of which registration was sought come within Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘coffee, artificial coffee, coffee based beverages, coffee beverages with milk’.

4 The trade mark application concerning mark No 1 was published in Community Trade Marks Bulletin No 5/2004 of 2 February 2004, that concerning mark No 2 in Community Trade Marks Bulletin No 83/2003 of 24 November 2003 and that concerning mark No 3 in Community Trade Marks Bulletin No 82/2003 of 17 November 2003.

5 On 1 April 2004 the applicant, Société des produits Nestlé SA, filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to the registration of mark No 1. It also filed a notice of opposition to registration of mark No 2 on 23 February 2004 and to that of mark No 3 on 17 February 2004.

6 The oppositions were based, in particular, on earlier international and national marks representing a red mug on a bed of coffee beans (‘the earlier marks’).

7 They concern, first, the red, black, brown, white, orange and gold international figurative mark, registered under the reference IR 726641 and represented as follows:

8 This mark was registered on 18 January 2000, pursuant to the Madrid Agreement concerning the International Registration of Marks of 14 April 1891, as revised and amended, in respect of goods coming within Class 30 of the Nice Agreement and corresponding to the following description: ‘coffee and coffee extracts, coffee and coffee extract blends, instant coffees, decaffeinated coffees, decaffeinated coffee extracts’.

9 The mark is, inter alia, protected in the following Member States of the European Union: Belgium, Germany, Spain, France, Italy, Luxembourg, the Netherlands, Austria and Portugal.

10 That sign was also registered as a national trade mark in Greece on 8 May 2000 under No 142377 in respect of goods coming within Class 30 of the Nice Agreement, in particular for ‘coffee, coffee extracts and coffee based preparations, artificial coffee and artificial coffee extracts.’

11 The oppositions also concern the international figurative mark, described as being red, brown and golden, registered under reference IR 633089 and represented in black and white as follows:

12 This mark was registered on 9 March 1995, pursuant to the Madrid Agreement, in respect of goods coming within Class 30 of the Nice Agreement, and corresponding to the following description: ‘coffee and coffee extracts, coffee and coffee extract blends, instant coffees, decaffeinated coffees, decaffeinated coffee extracts’.

13 The mark is protected, inter alia, in the following Member States of the European Union: Belgium, Germany, Spain, France, Italy, Luxembourg, the Netherlands, Austria and Portugal.

14 Furthermore, that sign was registered as a national trade mark in respect of the same goods in a number of Member States of the European Union, namely Denmark (registered on 3 February 1995 under No 976.1995), Greece (registered on 17 August 1999 under No 122009) and Finland (registered on 20 September 1995 under No 140164).

15 The oppositions were based on all the abovementioned goods protected by the earlier marks and directed against all the goods referred to in the Community trade mark applications.

16 The grounds relied on in support of the oppositions were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) and Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009).

17 By decisions of 27 February (Case T‑5/08), 27 March (Case T‑6/08) and 6 September 2006 (Case T‑7/08), the Opposition Division rejected the oppositions.

18 On 25 April (Cases T‑5/08 and T‑6/08) and 5 October 2006 (Case T‑7/08), the applicant filed notices of appeal against the decisions of the Opposition Division.

19 By three decisions of 1 October 2007 (‘the contested decisions’), the Board of Appeal dismissed those appeals. It found, in essence, that the oppositions were unfounded because the marks at issue were not similar.

Forms of order sought

20 The applicant claims that the Court should:

– annul the contested decisions;

– decide that the Community trade mark applications must be rejected;

– order OHIM to pay the costs, including those incurred by the applicant before the Board of Appeal;

– order the intervener to pay the costs, including those incurred by the applicant before the Board of Appeal.

21 OHIM contends that the Court should:

– dismiss the actions;

– order the applicant to pay the costs.

22 The intervener contends that the Court should:

– uphold the contested decisions;

– order the registration of the marks applied for;

– order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal.

23 At the hearing, in reply to a question from the Court, the intervener indicated that its second head of claim, seeking an order for the registration of the marks applied for, is in actual fact indissociable from its first head of claim, formal note of which was taken in the minutes of the hearing.

Law

24 In support of its action, the applicant relies on two pleas, alleging, respectively, infringement of Article 8(1)(b) of Regulation No 40/94 and infringement of Article 8(5) of Regulation No 40/94.

1. The first plea, alleging...