Judgments nº T-149/19 of Tribunal General de la Unión Europea, November 14, 2019

Resolution Date:November 14, 2019
Issuing Organization:Tribunal General de la Unión Europea
Decision Number:T-149/19
SUMMARY

Remisión prejudicial - Fiscalidad directa - Libre circulación de capitales - Movimientos de capitales entre los Estados miembros y terceros países - Impuesto sobre sociedades - Fondos de pensiones residentes y no residentes - Tributación de los dividendos derivados de paquetes de acciones - Retención en origen - Deducción íntegra, del impuesto sobre sociedades, de dicha retención en origen -... (see full summary)

 
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(EU trade mark - Opposition proceedings - Application for an EU figurative mark representing the shape of a human figure on an escutcheon - EU figurative mark representing the shape of a human figure - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Power to alter decisions)

In Case T-149/19,

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz, A. Lambrecht and C. Elkemann, lawyers,

applicant,

v

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

defendant,

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

Jumbo Africa, SL, established in L’Hospitalet de Llobregat (Spain),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 30 November 2018 (Case R 876/2018-2) relating to opposition proceedings between Jumbo Africa and Société des produits Nestlé,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of deliberation, of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 8 March 2019,

having regard to the response lodged at the Court Registry on 19 June 2019,

having regard to the fact that no request for a hearing was submitted by the parties within 3 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 23 March 2016, the applicant, Société des produits Nestlé SA, 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:

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3 The goods in respect of which registration was sought are in Classes 29 and 30 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 29: ‘Soups, soup concentrates, preparations for making soups, stock also in the form of cubes, of tablets or granulated, bouillons, bouillons concentrates, preparations for making bouillons, broth’;

- Class 30: ‘Flours and preparations made from cereals, bread, yeast, pastry; rice, pasta, noodles; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes; pizzas; sandwiches; mixtures of alimentary paste and oven-ready prepared dough; cake powders; sauces, preparations for making sauces; soya sauce; ketchup; flavourings and seasonings for food, edible spices, condiments, salad dressings, mayonnaise; mustard; vinegar’.

4 The trade mark application was published in Community Trade Marks Bulletin No 73/2016 of 20 April 2016.

5 On 20 July 2016, Pasa Africa, SL, which subsequently became Jumbo Africa, SL, 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 all the goods referred to in paragraph 3 above.

6 The opposition was based on the following earlier EU figurative mark:

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7 That mark designates, inter alia, goods in Classes 29 and 30 corresponding to the following description:

- Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;

- Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’.

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

9 At the request of the applicant, lodged on 7 February 2017, on the basis of Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), EUIPO requested Jumbo Africa to furnish proof of use of the earlier mark for the goods on which the opposition was based.

10 On 3 July 2017, Jumbo Africa produced evidence of use of the earlier mark.

11 On 12 March 2018, the Opposition Division rejected the opposition, without ruling on the use of the earlier mark and assuming that the goods in question were identical.

12 On 14 May 2018, Jumbo Africa 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.

13 By decision of 30 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal. In particular, it considered, in view of, inter alia, the low distinctiveness of the earlier trade mark and the average degree of visual and conceptual similarity of the trade marks at issue, that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 would be established if, as the Opposition Division had assumed, the goods in question were regarded as being identical. It therefore referred the case back to the Opposition Division for a decision on the genuine use of the earlier mark and the comparison of those goods.

Forms of order sought

14 The applicant claims that the Court should:

- annul the contested decision;

- dismiss the appeal brought against the Opposition Division’s decision;

- order EUIPO to pay the costs of the proceedings before the Court and order Jumbo Africa to pay the costs of the proceedings before EUIPO.

15 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

16 In support of the action, the applicant relies on three pleas in law, the first and second alleging infringement of the first and second sentences of Article 94(1) of Regulation 2017/1001 and the third alleging infringement of Articles 8(1)(b) and 46(1)(a) of that regulation. First of all, it is appropriate to examine the third plea.

17 The applicant maintains, inter alia, first, that the trade marks at issue are not visually and conceptually similar and, second, that the earlier trade mark has only a weak distinctive character. It thus submits that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 is excluded, even if the goods in question were regarded as being identical. It therefore criticises the Board of Appeal for having considered it necessary to rule on the proof of genuine use of the earlier mark and to carry out a comparison of the goods in question.

18 EUIPO submits that the Board of Appeal correctly took the view that the marks at issue are visually and conceptually similar to an average degree and that the earlier mark has an average distinctive character. Furthermore, EUIPO claims that the Board of Appeal did not rule on the existence of a likelihood of confusion, since it remitted the case to the Opposition Division for that purpose. Consequently, any error in the assessment of the degree of similarity of the marks at issue would not be liable to lead to the annulment of the contested decision.

19 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

20 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

The relevant public

21 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM - Altana Pharma (RESPICUR), T-256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

22 In the present case, the Board of Appeal did not call into question the Opposition Division’s...

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