Judgments nº T-428/18 of Tribunal General de la Unión Europea, October 10, 2019
|Resolution Date:||October 10, 2019|
|Issuing Organization:||Tribunal General de la Unión Europea|
Procedimiento prejudicial - Artículo 56 TFUE - Libre prestación de servicios - Desplazamiento de trabajadores - Conservación y traducción de la documentación salarial - Permiso de trabajo - Sanciones - Proporcionalidad - Multas de un importe mínimo predefinido - Acumulación - Inexistencia de límite máximo - Costas judiciales - Pena sustitutiva de privación de libertad
(EU trade mark - Opposition proceedings - Application for EU figurative mark mc dreams hotels Träumen zum kleinen Preis! - Earlier EU word mark McDONALD’S - Article 8(5) of Regulation (EU) 2017/1001 - Family of marks - Taking unfair advantage of the distinctive character or repute of the earlier mark)
In Case T-428/18,
McDreams Hotel GmbH, established in Feldkirchen (Germany), represented by S. Schenk and S. Kleinmanns, lawyers,
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek and H. O’Neill, acting as Agents,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
McDonald’s International Property Co. Ltd, established in Wilmington, Delaware (United States), represented by C. Eckhartt and K. Thanbichler-Brandl, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 18 April 2018 (Case R 972/2017-2), relating to opposition proceedings between McDonald’s International Property Co. and McDreams Hotel,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni (Rapporteur), President, K. Kowalik-Bańczyk and C. Mac Eochaidh, Judges,
Registrar: E. Hendrix, Administrator,
having regard to the application lodged at the Court Registry on 12 July 2018,
having regard to the response of EUIPO lodged at the Court Registry on 26 October 2018,
having regard to the response of the intervener lodged at the Court Registry on 6 November 2018,
further to the hearing on 20 June 2019,
gives the following
Background to the dispute
1 On 26 October 2015, the applicant, McDreams Hotel 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 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 services in respect of which registration was sought are in Class 43 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: ‘Providing temporary accommodation’.
4 The trade mark application was published on 4 November 2015.
5 On 29 January 2016, the intervener, McDonald’s International Property 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 services referred to in paragraph 3 above.
6 The opposition was based on:
- the EU word mark McDONALD’S, filed on 1 April 1996 and registered on 16 July 1999 under No 62 497, for goods and services in Classes 25, 28 to 32, 35, 41 and 42;
- the EU word mark McMISSION, filed on 4 July 2013 and registered on 28 November 2013 under No 11 955 929, for goods and services in Classes 9, 38 and 41;
- the EU word mark McINTERNET, filed on 11 October 2002 and registered on 24 March 2004 under No 2 888 402, for services in Classes 35, 38 and 43;
- the EU word mark McCOMPASS, filed on 12 June 2014 and registered on 13 October 2014 under No 12 982 658, for goods and services in Classes 9 and 43;
- the EU word mark McFAMILY, filed on 27 January 2012 and registered on 15 August 2012 under No 10 633 436, for services in Classes 35 and 38;
- the EU word mark McCAFE, filed on 28 April 2010 and registered on 1 September 2012 under No 9 062 118, for goods in Class 30;
- the EU word mark McWRAP, filed on 5 November 2009 and registered on 15 June 2010 under No 8 664 617, for goods and services in Classes 29, 30 and 43;
- the EU word mark BIG MAC, filed on 1 April 1996 and registered on 22 December 1998 under No 62 638, for goods and services in Classes 29, 30 and 42;
- the EU word mark McRIB, filed on 19 November 1999 and registered on 11 June 2001 under No 1 391 663, for goods in Classes 29 and 30;
- the EU word mark McMUFFIN, filed on 27 July 2005 and registered on 7 August 2006 under No 4 562 419, for goods and services in Classes 29, 30 and 43;
- the EU word mark McDOUBLE, filed on 11 March 2013 and registered on 23 July 2013 under No 11 642 519, for goods in Class 30;
- the EU word mark McBITES, filed on 21 September 2012 and registered on 30 January 2013 under No 11 205 093, for goods and services in Classes 29, 30 and 43;
- the EU word mark McCOUNTRY, filed on 22 February 2013 and registered on 3 July 2013 under No 11 596 442, for goods and services in Classes 29, 30 and 43;
- the EU word mark McTOAST, filed on 24 October 2005 and registered on 20 April 2007 under No 4 699 054, for goods and services in Classes 29, 30 and 43;
- the EU word mark McFISH, filed on 18 April 2006 and registered on 20 July 2007 under No 5 056 429, for goods in Classes 9 and 30;
- the EU word mark Mc, filed on 4 November 2011 and registered on 15 March 2012 under No 10 392 835, for goods and services in Classes 29, 30, 32 and 43;
- and the well-known German trade mark McDONALD’S, for goods in Classes 29, 30 and 32 and for restaurant services in Class 42.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5), respectively, of Regulation 2017/1001). Reputation was claimed for the EU word mark McDONALD’S in respect of the goods in Classes 29, 30 and 32, as well as the services in Class 42, now 43, corresponding to the following description: ‘Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation and provision of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.’
8 On 20 March 2017, the Opposition Division rejected the opposition in its entirety.
9 On 10 May 2017, 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 Opposition Division.
10 By decision of 18 April 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal and annulled the Opposition Division’s decision. Although it concluded, as did the Opposition Division, that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation 2017/1001, it considered that all the conditions for the application of Article 8(5) of that regulation were, in the present case, fulfilled.
11 In that regard, the Board of Appeal found that the earlier word mark McDONALD’S had a reputation, in particular, in respect of the services in Class 43, which the Board described as fast-food restaurant services (paragraphs 47 and 58 of the contested decision).
12 The Board of Appeal also noted that the intervener owned a family of marks in relation to fast-food establishments that was defined by the prefix ‘mc’. It added that that prefix had acquired a high degree of distinctive character through use on the fast-food market when combined with a generic term denoting a food (for example, in the marks McFISH, McMUFFIN, McRIB, McTOAST and McWRAP) or with a descriptive characteristic of a foodstuff (for example, in the marks McDOUBLE, McBITES and McCOUNTRY) (paragraphs 16, 17, 48, 49 and 58 of the contested decision).
13 Since the main, dominant and most distinctive element of the mark applied for was, in the Board of Appeal’s view, ‘mc dreams’, it held that the mark applied for fitted very well into the intervener’s family of marks (paragraphs 49 and 58 of the contested decision).
14 The Board of Appeal also found that the marks at issue were similar (paragraphs 32 to 34, 40 and 59 of the contested decision).
15 Furthermore, it found that the services at issue were clearly similar to a certain degree (paragraphs 29 and 60 of the contested decision).
16 On the basis of the earlier mark’s outstanding reputation, particularly for fast-food restaurant services, and the certain degree of similarity between the marks at issue and the services at issue, the Board of Appeal concluded that the unfair advantage taken by the mark applied for of the earlier mark’s repute lay in the fact that the relevant public, that is to say, the general public of the European Union, could be attracted by the mark applied for, which reproduces the structure of the earlier mark and the marks belonging to the intervener’s family of marks, which would lead that public to purchase the services marketed by the applicant (paragraphs 13, 23, 58 and 59 of the contested decision).
17 Lastly, the Board of Appeal considered that the applicant had not demonstrated the existence of due cause for the use of the mark applied for (paragraph 62 of the contested decision).
Forms of order sought
18 The applicant claims that the General Court should:
- annul the contested decision;
- order EUIPO to pay the costs.
19 EUIPO contends that the Court should:
- dismiss the application;
- order the applicant to pay the costs.
20 The intervener contends that the Court should:
- dismiss the application;
- order the applicant to pay the costs.
21 The applicant relies on two pleas in law, the first alleging infringement of Article 8(1)(b) of...
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