Judgments nº T-708/18 of Tribunal General de la Unión Europea, October 24, 2019

• Resolution Date: October 24, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-708/18

(EU trade mark - Opposition proceedings - Application for EU figurative mark FLIS Happy Moreno choco - Earlier national figurative marks MORENO - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Substitution of the list of goods covered by the earlier national figurative marks - Rectification of the decision of the Board of Appeal - Article 102(1) of Regulation 2017/1001 - Legal basis - Previous decision-making practice - Legal certainty - Legitimate expectations)

In Case T-708/18,

ZPC Flis sp.j., established in Radziejowice (Poland), represented by M. Kondrat, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by K. Kompari 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:

Aldi Einkauf GmbH & Co. OHG, established in Essen (Germany), represented by N. Lützenrath, U. Rademacher, C. Fürsen and M. Minkner, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 13 September 2018 (Case R 2113/2017-1), relating to opposition proceedings between Aldi Einkauf and ZPC Flis,

THE GENERAL COURT (Eighth Chamber),

composed, at the time of the deliberation, of A.M. Collins, President, R. Barents and J. Passer (Rapporteur), Judges,

Registrar: E Coulon,

having regard to the application lodged at the Court Registry on 28 November 2018,

having regard to the response of EUIPO lodged at the Court Registry on 11 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 4 April 2019,

having regard to the Court’s written question to the parties,

having regard to the parties’ letters lodged at the Court Registry on 2 and 12 August 2019, stating that they would not attend the hearing, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 108(2) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 22 January 2016, the applicant, ZPC Flis sp.j., 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 figurative sign reproduced below:

3 The goods and services in respect of which registration was sought are in Classes 30 and 35 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, for each of those classes, to the following description:

- Class 30: ‘Confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’;

- Class 35: ‘Retailing or wholesaling of confectionery, cookie molds, edible wafers and rolled wafers, wholesaling and retailing of confectionery, cookie molds, edible wafers and rolled wafers via the internet’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 59/2016 of 30 March 2016.

5 On 24 June 2016, the intervener, Aldi Einkauf GmbH & Co. OHG, 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 referred to in paragraph 3 above.

6 The opposition was based on the earlier German figurative marks originally registered for the goods ‘coffee; coffee substitutes; coffee products; coffee-based beverages; tea, cocoa; cocoa products; cocoa-based beverages; chocolate-based beverages; all aforementioned goods also in instant form’, in Class 30 (‘the initial list of goods’). Following a partial cancellation decision of 29 September 2008 of the Deutsches Patent- und Markenamt (German Patent and Trademark Office, Germany), the registration of the earlier German figurative marks was limited to the goods ‘coffee, coffee-based products and beverages with a proportion of coffee; cocoa-based beverage powder’ in Class 30 (‘the amended list of goods’). Those earlier marks are the following:

- earlier German figurative mark filed on 17 January 2007 and registered on 29 March 2007 under No 30702839, as reproduced below:

- earlier German figurative mark filed on 17 January 2007 and registered on 29 March 2007 under No 30702840, as reproduced below:

7 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).

8 On 26 January 2016, the applicant submitted its observations to EUIPO.

9 By decision of 31 August 2017, the Opposition Division rejected the opposition, basing its decision on the amended list of goods covered by the earlier marks, an opposition which it examined only with regard to earlier mark No 30702839, since the applicant had not produced evidence of the renewal of earlier mark No 30702840.

10 On 28 September 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.

11 By decision of 13 September 2018 (‘the contested decision’), the First Board of Appeal of EUIPO, taking note of the evidence of the renewal of earlier mark No 30702840 produced by the applicant on appeal, partially annulled the Opposition Division’s decision.

12 In that regard, the Board of Appeal found that the relevant territory was Germany and that the relevant public consisted of members of the general public who are relatively well informed and reasonably observant and circumspect, and whose level of attention is average.

13 As regards the comparison of the goods and services at issue, the Board of Appeal found that the ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’ in Class 30 covered by the mark applied for and the goods on the initial list of goods covered by the earlier marks were identical or similar. The Board of Appeal also found, in essence, that the services covered by the mark applied for were similar to the goods on the initial list covered by the earlier marks, with the exception of the services ‘retailing or wholesaling of cookie molds; wholesaling and retailing of cookie molds via the internet’, which are dissimilar.

14 As regards the comparison of the signs at issue, the Board of Appeal found, in essence, that the distinctive element of the signs was the common term ‘moreno’, and that the signs were visually similar and phonetically very similar, if not identical, whereas the conceptual aspect carried no weight in the comparison of the signs at issue.

15 The Board of Appeal therefore concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in respect of all the goods and services, with the exception of the services in Class 35 corresponding to the following description: ‘retailing or wholesaling of cookie molds, wholesaling and retailing of cookie molds via the internet’.

16 On 15 November 2018, the Board of Appeal adopted a decision entitled ‘Corrigendum’ on the basis of Article 102 of Regulation 2017/1001, notified on 11 December 2018 (‘the corrigendum of 15 November 2018’). It thus replaced the initial list of goods with the amended list of goods covered by the earlier marks.

17 Paragraph 1 of the operative part of the contested decision was not amended by the corrigendum of 15 November 2018.

Forms of order sought

18 The applicant claims that the Court should:

- annul the contested decision and refer the case back to EUIPO for reconsideration; or

- alter the contested decision ‘by declaring that there are no relative grounds for refusal of registration of [the mark applied for] for all the goods in Classes 30 and 35 and that the mark must be registered’;

- ‘award the costs in the applicant’s favour’.

19 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

20 The intervener contends that the Court should:

- declare the action inadmissible;

- dismiss the action;

- order the applicant to pay the costs.

Law

21 In support of its action, the applicant raises a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In that context, the applicant claims that there has been an infringement of the principle of the protection of legitimate expectations and the principle of legal certainty.

Admissibility of the action

22 The intervener contends that the action is inadmissible, without raising any objection of inadmissibility under Article 130 of the Rules of Procedure of the General Court, on the ground that the applicant’s heads of claim are contrary to the principle that claims should be ‘definite and unambiguous’. According to the intervener, it is impossible to know which claim the applicant is pursuing in the present case.

23 In the present case, it must be stated that the action meets the requirements of clarity and precision laid down in Article 177(1)(e) of the Rules of Procedure, since it is clearly intelligible that the applicant seeks annulment of the contested decision and, if appropriate, alteration of that decision.

24 The action must therefore be declared admissible.

Admissibility of Annexes A. 4 to A.2 8 to the application, produced for the first time before the Court

25 EUIPO contends that the evidence provided by the applicant relating to the use of the term ‘moreno’ on the market is inadmissible as it is new evidence, in so far as it was not available to the Board of...