Judgments nº T-527/18 of Tribunal General de la Unión Europea, November 21, 2019

• Resolution Date: November 21, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-527/18

(EU trade mark - Opposition proceedings - Application for EU figurative mark tec.nicum - Earlier national figurative mark TECNIUM - Relative ground for refusal - Likelihood of confusion - Similarity of the services - Similarity of the signs - Article 8(1)(b) of Regulation (EU) 2017/1001 - Genuine use of the earlier mark - Point (a) of the second subparagraph of Article 18(1) and Article 47(2) and (3) of Regulation 2017/1001 - Form differing in elements which do not alter the distinctive character - Evidence submitted for the first time before the General Court)

In Case T-527/18,

K.A. Schmersal Holding GmbH & Co. KG, established in Wuppertal (Germany), represented by A. Haudan, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas 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

Tecnium, SL, established in Manresa (Spain), represented by E. Sugrañes Coca, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 June 2018 (Case R 2427/2017-5), relating to opposition proceedings between Tecnium and K.A. Schmersal Holding,

THE GENERAL COURT (First Chamber),

composed of V. Valančius (Rapporteur), acting as President, J. Svenningsen and U. Öberg, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 6 September 2018,

having regard to the response of EUIPO lodged at the Court Registry on 30 January 2019,

having regard to the response of the intervener lodged at the Court Registry on 17 January 2019,

further to the hearing on 10 September 2019,

gives the following

Judgment

1. Background to the dispute

   1 On 9 January 2015, the applicant, K.A. Schmersal Holding GmbH & Co. KG, 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 applied for are in, inter alia, Class 42 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: ‘Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software’.

   4 The trade mark application was published in Community Trade Marks Bulletin No 12/2015 of 20 January 2015.

   5 On 16 April 2015, the intervener, Tecnium, SL, filed a notice of opposition under 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 following earlier Spanish figurative mark:

   

   7 That mark, lodged on 6 March 2000 and registered on 22 January 2001 under No 2297058, covers services in Class 42 corresponding to the following description: ‘Engineering services; scientific and industrial research; graphic design and industrial drawing; computer programming’.

   8 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).

   9 On 30 November 2016, the applicant made a request under Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) that the intervener be required to furnish proof of genuine use of the earlier mark.

   10 By decision of 26 September 2017, the Opposition Division upheld the opposition.

   11 On 14 November 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

   12 By decision of 21 June 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, after having determined that the period in respect of which genuine use of the earlier mark had to be demonstrated ran from 20 January 2010 to 19 January 2015 (‘the relevant period’), the Board of Appeal assessed the proof of genuine use of that mark furnished by the intervener, and found that such use of the mark during the relevant period had been established, but solely in respect of some of the services in Class 42 covered by that mark, namely those corresponding to the following description: ‘Engineering services; industrial drawing’. In the second place, the Board of Appeal held, in essence, that the relevant public is composed of both professional consumers and the general public, that the services at issue are in part identical and in part similar and that the signs at issue are visually, phonetically and conceptually similar. It concluded that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

2. Forms of order sought

   13 The applicant claims that the Court should:

   - annul the contested decision;

   - order EUIPO to pay the costs.

   14 EUIPO and the intervener contend that the Court should:

   - dismiss the action;

   - order the applicant to pay the costs.

3. Law

   A. Documents presented for the first time before the Court

   15 The applicant attached, as an annex to the application, a set of documents consisting of extracts from internet sites designed, in essence, to support its claims that, first, the Board of Appeal’s definition of the relevant public in the contested decision is incorrect and, second, there is no similarity between the signs at issue.

   16 EUIPO contends that those documents must be declared inadmissible as they were not submitted during the proceedings before it. Furthermore, EUIPO submits that some of those documents must also be disregarded since they are not accompanied by translations into the language of the case.

   17 In the present case, it must be noted that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 72(2) of Regulation 2017/1001, according to which ‘the action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the TFEU, infringement of this Regulation or of any rule of law relating to their application or misuse of power’. It is apparent from that provision that facts not submitted by the parties before the departments of EUIPO cannot be submitted at the stage of the action brought before the Court. The Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of EU law made by that Board of Appeal, particularly in the light of facts which were submitted to the latter. By contrast, the Court cannot carry out such a review by taking into account matters of fact newly produced before it (judgment of 13 March 2007, OHIM v Kaul, C-29/05 P, EU:C:2007:162, paragraph 54). It is not the Court’s function, therefore, to review the facts in the light of evidence produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE), T-346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

   18 In so far as the documents referred to in paragraph 15 above were submitted for the first time before the Court, a fact which the applicant acknowledged at the hearing, they cannot be taken into consideration for the purposes of reviewing the legality of the contested decision and must therefore be disregarded without any need to determine whether a translation of some of those documents would have been necessary for the proper conduct of the proceedings.

   B. Substance

   19 In support of its action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, and, second, infringement of Article 8(1)(b) of Regulation 2017/1001.

   1. The first plea in law, alleging infringement of point ( a ) of the second subparagraph of Article 18 (1) of Regulation 2017/1001

      20 In the context of its first plea, the applicant claims that the Board of Appeal erred in finding that the earlier mark had been put to genuine use in respect of the services in Class 42 corresponding to the description ‘engineering services; industrial drawing’. According to the applicant, the forms in which the intervener used the earlier mark were very different from the earlier mark in the form in which it was registered, with the result that that mark was used in a form which altered its distinctive character within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

      21 EUIPO and the intervener dispute the applicant’s arguments.

      22 In accordance with settled case-law, it is apparent from Article 47(2) and (3) of Regulation 2017/1001, read in the light of recital 24 of Regulation 2017/1001, and from Article 10(3) of Delegated Regulation (EU) 2017/1430 supplementing Regulation No 207/2009 and repealing Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1) that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. By contrast...