Judgments nº T-356/18 of Tribunal General de la Unión Europea, September 24, 2019

• Resolution Date: September 24, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-356/18

(EU trade mark - Opposition proceedings - Application for the EU figurative mark V V-WHEELS - Earlier EU, national and unregistered figurative marks VOLVO - Relative ground for refusal - Similarity of the signs - Article 8(5) of Regulation (EU) 2017/1001) In Case T-356/18,

Volvo Trademark Holding AB, established in Gothenburg (Sweden), represented by T. Dolde, lawyer, and M. Hawkins, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Bonne and H. O’Neill, acting as Agents,

defendant,

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

Paalupaikka Oy, established in Iisalmi (Finland),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 21 March 2018 (Case R 1852/2017-4), relating to opposition proceedings between Volvo Trademark Holding and Paalupaikka,

THE GENERAL COURT (Seventh Chamber),

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

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 7 June 2018,

having regard to the response lodged at the Court Registry on 4 October 2018,

further to the hearing on 16 May 2019,

gives the following

Judgment

Background to the dispute

1 On 4 August 2015, Paalupaikka Oy 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:

3 That sign is described in the application for registration as ‘a blue circle containing a letter “[v]” in silver’. The circle ‘is surrounded by a narrow silver band’ and appears above ‘the text “[v-wheels]”’ in which ‘the letter “[v]” is silver while the rest of the text is blue’. The goods in respect of which registration was sought are in Class 12 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: ‘Wheel rims [for automobiles]; [r]ims for vehicle wheels; [w]heels; [c]asters [wheels] for vehicles; [a]utomobile wheels; [w]heels for motorcycles; [v]ehicle wheels; [c]asters [wheels] for trolleys; [w]heels [land vehicle parts]; [w]heels for racing karts; [w]heels, tyres and continuous tracks’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 182/2015 of 25 September 2015.

5 On 31 December 2015, the applicant, Volvo Trademark Holding AB, filed a notice of opposition to registration of the sign applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the following earlier marks, which all covered goods in Class 12:

- the EU figurative mark registered under the number 10397016, reproduced below:

- the EU figurative mark registered under the number 4804522, reproduced below:

- the EU figurative mark registered under the number 9045311, reproduced below:

- the Finnish figurative mark registered under the number 66240, reproduced below:

- the Swedish figurative mark registered under the number 385923, reproduced below:

- the Swedish figurative mark which was the subject of an application for registration on 22 August 2014, reproduced below:

- the trade mark which is well known in the European Union, reproduced below:

- the trade mark which is well known in the European Union, reproduced below:

- the trade mark which is well known in the European Union, reproduced below:

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8 On 19 June 2017, the Opposition Division rejected the opposition in its entirety.

9 On 22 August 2017, the applicant 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 Opposition Division.

10 By decision of 21 March 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, first of all, it found that the sign in respect of which registration was sought was dissimilar to the earlier marks relied on in support of the opposition and that, consequently, there could be no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Next, it rejected the ground for opposition based on Article 8(5) of that regulation because the first condition for the application of that provision was not fulfilled, since the signs at issue were dissimilar. Lastly, it stated that neither the opinion surveys nor the decision of the Patentstyret (Norwegian Industrial Property Office), submitted by the applicant, could call those findings into question.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs, including those incurred in the proceedings before the Opposition Division and the Fourth Board of Appeal of EUIPO.

12 EUIPO contends that the Court should:

- dismiss the action in its entirety;

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

Law

13 In support of the action, the applicant relies on four pleas in law. The first and second pleas allege infringement of Article 8(5) and Article 8(1)(b) of Regulation 2017/1001 respectively. The third plea alleges that the Board of Appeal distorted the facts and evidence, in infringement of Article 72(2) of Regulation 2017/1001. The fourth plea alleges that the Board of Appeal infringed its obligation to state reasons pursuant to Article 94(1) of Regulation 2017/1001.

14 It is clear from the contested decision that the Board of Appeal found, when analysing the relative ground for refusal under Article 8(1)(b) of Regulation 2017/1001, that the signs at issue were dissimilar, with the result that the opposition based both on Article 8(1)(b) and on Article 8(5) of that regulation had to be rejected.

15 As regards the first plea, alleging infringement of Article 8(5) of Regulation 2017/1001, the applicant submits, in essence, that the Board of Appeal erred in finding that there was no similarity between the signs and in therefore rejecting the relative ground for refusal set out in that provision.

16 Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

17 It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that, first, the marks at issue must be identical or similar; secondly, the earlier mark cited in opposition must have a reputation; and, thirdly, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (judgment of 28 June 2018, EUIPO v Puma, C-564/16 P, EU:C:2018:509, paragraph 54).

18 According to settled case-law, the infringements referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, as a result of which the relevant public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see judgment of 12 March 2009, Antartica v OHIM, C-320/07 P, not published, EU:C:2009:146, paragraph 43 and the case-law cited).

19 As regards, in particular, the first condition for the application of Article 8(5) of Regulation 2017/1001, which has been referred to in paragraph 17 above, namely that the signs at issue must be identical or similar, it must be borne in mind that, according to the case-law of the Court of Justice, the degree of similarity required under Article 8(1)(b) of Regulation 2017/1001, on the one hand, and Article 8(5) of that regulation, on the other, is different. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon the finding that there is such a degree of similarity between the marks at issue that there is a likelihood of confusion between them on the part of the relevant public, such a likelihood of confusion is not necessary for the purposes of the protection conferred by Article 8(5) of that regulation. Accordingly, the types of harm referred to in Article 8(5) of Regulation 2017/1001 may be the consequence of a lower degree of similarity between the earlier and the later marks, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them (judgments of 24 March 2011, Ferrero v OHIM, C-552/09 P, EU:C:2011:177, paragraph 53, and of 20 November 2014, Intra-Presse v OHIM, C-581/13 P and...