Judgments nº T-542/18 of Tribunal General de la Unión Europea, October 03, 2019

• Resolution Date: October 03, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-542/18

(EU trade mark - Opposition proceedings - Application for EU figurative mark wanda films - Earlier EU word mark WANDA - Relative ground for refusal - Restriction of the application for registration - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-542/18,

Wanda Films, SL, established in Pozuelo de Alarcón (Spain),

Wanda Visión, SA, established in Pozuelo de Alarcón,

represented by C. Planas Silva, lawyer,

applicants,

v

European Union Intellectual Property Office (EUIPO), represented by P. Sipos 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

Dalian Wanda Group Co. Ltd, established in Dalian (China), represented by M. Hawkins, Solicitor, and by T. Dolde and K. Lüder, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 6 July 2018 (affaire R 829/2017-5), relating to opposition proceedings between Dalian Wanda Group and Wanda Films,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 17 September 2018,

having regard to the response of EUIPO lodged at the Court Registry on 4 January 2019,

having regard to the response of the intervener lodged at the Court Registry on 14 January 2019,

having regard to the request for a stay of proceedings lodged at the Court Registry by the applicant on 8 February 2019,

having regard to the observations on the request to stay proceedings lodged at the Court Registry by EUIPO and the intervener on 20 February 2019 and 26 February 2019 respectively,

having regard to the decision of 1 March 2019 rejecting the request for a stay of proceedings lodged by the applicant,

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 1 April 2015, the first applicant, Wanda Films, SL, 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 The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9 and 41 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 9: ‘Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Safety, security, protection and signalling devices; Devices for treatment using electricity; Information technology and audiovisual equipment’;

- Class 41: ‘Services of a film distributor; Education; Entertainment; Sporting and cultural activities; Audio and visual entertainment services; Production, distribution and management of motion picture films, cable television programmes and television programmes; Entertainment services in the nature of live-action, comedy, drama and/or animated television programmes; Production of comedies, dramas and/or live-action television programmes; Production of live-action, comedy, drama and/or animated motion picture theatrical films; Internet services in the nature of providing information via a global computer network in the field of entertainment relating specifically to music, movies, and television series; Providing of general-interest news relating to a production company’s audiovisual goods and services via a global computer network or the internet; Studio services for the recording of cine-films; Publication of books’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2015/095 of 26 May 2015.

5 On 21 August 2015, the intervener, Dalian Wanda Group Co. Ltd, 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 the goods and services referred to in paragraph 3 above.

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 The opposition was based, inter alia, on the earlier EU word mark WANDA, filed on 10 September 2012 and registered on 2 May 2013 under number 11212651 for goods and services in, inter alia, Classes 9 and 41 and corresponding to the following description:

- Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; cosmographic instruments; Global Positioning System [GPS] apparatus; ionization apparatus not for the treatment of air or water; navigation apparatus for vehicles [on-board computers]; navigational instruments; protection devices for personal use against accidents; radar apparatus; railway traffic safety appliances’;

- Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts’.

8 In support of its EU trade mark application, the first applicant claimed seniority of its Spanish national trade mark WANDA FILMS, lodged in 1993 and registered in 1994, which thus preceded the earlier mark, lodged in 2012 and registered in 2013. Other Spanish national trade marks held by the first applicant and by Wanda Visión, SA, the second applicant, were also relied on during the opposition proceedings.

9 On 28 February 2017, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation (EC) No 207/2009.

10 On 26 April 2017, the first 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. In support of that appeal, it pointed out, inter alia, that its trade name coincided with the trade mark applied for and also stated that it has held the domain name ‘wandafilms.com’ since 2002.

11 In its statement of grounds before the Board of Appeal, the first applicant requested, with regard to the application for registration, that the services included in Class 38 be withdrawn and that Classes 9 and 41 be restricted.

12 By decision of 6 July 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the first applicant’s appeal. In particular, as regards the restriction of the goods and services requested by the first applicant, the Board of Appeal accepted the withdrawal of Class 38 and the restriction of Class 41 but rejected that of Class 9. Furthermore, it stated that it had been accepted by EUIPO that the seniority of the mark applied for dates back to 17 February 1993. On the substance, it found that the goods and services concerned were identical, that the relevant public would have a degree of attention ranging from average to higher than average, that the signs at issue were similar to at least an average degree and that, considering all of those factors, there was a likelihood of confusion between the signs at issue.

Forms of order sought

13 The applicants claim that the Court should:

- regard as admissible their arguments and documents submitted in support of the present action and before EUIPO;

- annul the contested decision;

- allow registration of the mark applied for.

14 EUIPO contends that the Court should:

- dismiss the action as manifestly unfounded;

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

15 The intervener contends that the Court should:

- dismiss the action;

- order the applicants to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.

Law

Admissibility

Locus standi

16 The intervener and EUIPO submit, in essence, that the action is inadmissible in so far as it is brought by the second applicant since it was neither an applicant for the mark applied for nor a party to the administrative proceedings before EUIPO.

17 It should be noted that, according to settled case-law, where admissibility must be established for one and the same application lodged by a number of applicants and the application is admissible in respect of one of them, there is no need to consider whether the other applicants are entitled to bring proceedings (see, to that effect, judgments of 24 March 1993, CIRFS...