Judgments nº T-736/18 of Tribunal General de la Unión Europea, November 28, 2019

Resolution DateNovember 28, 2019
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-736/18

(EU trade mark - Opposition proceedings - Application for the EU word mark Bergsteiger - Earlier Benelux word marks and EU figurative and word marks BERG - Relative ground for refusal - Article 47(1) and (2) of Regulation (EU) 2017/1001 - Admissibility of a request for proof of genuine use - No likelihood of confusion - Article 8(1)(b) of Regulation 2017/1001) In Case T-736/18,

Runnebaum Invest GmbH, established in Diepholz (Germany), represented by W. Prinz, lawyer,

applicant,

v

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

Berg Toys Beheer BV, established in Ede (Netherlands), represented by E. van Gelderen, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 October 2018 (Case R 572/2018-4) relating to opposition proceedings between Berg Toys Beheer and Runnebaum Invest,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of the 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 14 December 2018,

having regard to the response of EUIPO lodged at the Court Registry on 12 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 8 March 2019,

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 24 February 2016, the predecessor in law to the applicant, Runnebaum Invest 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 word sign Bergsteiger.

3 The goods and services in respect of which registration was initially sought are in Classes 12 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 to the following description:

- Class 12: ‘Vehicles: apparatus for locomotion by land’;

- Class 35: ‘Retailing of vehicles, apparatus for locomotion by land; advertising; business management’.

4 The application was published in Community Trade Marks Bulletin No 2016/055 of 21 March 2016.

5 On 21 June 2016, the intervener, Berg Toys Beheer BV, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001). The opposition was based on:

- the earlier Benelux word mark BERG (‘the first earlier mark’), registered on 25 January 1999 under number 653413 and renewed until 2 February 2019 for goods in Classes 12 and 28 corresponding, for each of those classes, to the following description:

- Class 12: ‘Vehicles over land’;

- Class 28: ‘Pedal go-karts (toy), toy-wagons, beach wagons (toy), toy trailers, toy wheel-barrows, toy tipper-trailors, toy scooters, toy diggers, toy tank trailors, toy cranes’;

- the earlier EU figurative mark BERG (‘the second earlier mark’), registered on 18 June 2011 under number 6446439 for goods and services in Classes 12, 28 and 41 corresponding, for each of those classes, to the following description:

- Class 12: ‘Means of transport, excluding bicycles and children’s bicycles; moving vehicles for children’;

- Class 28: ‘Toys, including construction toys, moving toys, other moving playing equipment and trampolines’;

- Class 41: ‘Education, providing of training, entertainment, sporting activities’;

- the earlier EU word mark BERG (‘the third earlier mark’), registered on 18 May 2011 under number 8305393 for goods in Class 28 corresponding to the following description: ‘Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees’.

6 The second earlier mark, on which, inter alia, the opposition was based, is represented below:

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7 It follows from the contested decision that the grounds on which the opposition was based were ‘those laid down in Article 8(1)(b) [of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, p. 1)]’. The opposition was directed against all the goods and services covered by the mark applied for and was based on all the goods and services designated by the earlier marks.

8 On 6 April 2017, the applicant filed its reply to the opposition. The following sentence appeared on the last page thereof, under the heading ‘Non-use’: ‘Furthermore, we raise the objection of non-use (Art. 15).’

9 By notification of 11 April 2017, the Opposition Division invited the intervener to prove use of the first earlier mark for all the goods and services on which the opposition was based and informed the intervener that the request for proof of use for the second and third earlier marks could not be taken into account, since it concerned marks which, at the date on which the trade mark application was filed, had not been registered for at least five years. In response, the intervener furnished proof of use.

10 On 22 February 2018, the Opposition Division rejected the opposition in its entirety.

11 On 28 March 2018, the intervener 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 On 5 September 2018, the applicant requested a limitation of the list of goods and services covered by its application for registration (‘the first limitation request’) so as to cover only goods and services corresponding to the following description:

- Class 12: ‘Vehicles and apparatus for locomotion by land, namely: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats’;

- Class 35: ‘Retailing of vehicles and apparatus for locomotion by land, namely the following goods: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats; Advertising concerning the following goods, namely the following goods [sic]: cars; motorcycles; scooters; e-bicycles; ebikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats; Business management concerning the following goods, namely: cars; motorcycles; scooters; e-bicycles; e-bikes; bicycles; bicycles for grown-ups; trekkingbikes; citybikes; BMX-bikes; racingbikes; foldingbikes; crossbikes; moutainbikes; bicycles for adolescent; bicycles for children; buggies; child safety seats’.

13 By decision of 22 October 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the intervener’s appeal in part. It upheld the opposition for the ‘vehicles: apparatus for locomotion by land’ in Class 12 and for the ‘retailing of vehicles, apparatus for locomotion by land’ in Class 35.

14 The Board of Appeal found that the opposition was based on the first earlier mark, on the one hand, and the second earlier mark, on the other. As regards the third earlier mark, the Board of Appeal found, in essence, that it could not serve as a basis for the opposition, since it was registered only for the goods in Class 28, which were different from the goods and services listed in the trade mark application.

15 The Board of Appeal’s findings on the merits of the opposition can be summarised as follows.

16 In the first place, as regards the first earlier mark, the Board of Appeal found that the applicant’s request for proof of use (see paragraph 8 above) did not meet the conditions laid down in Article 47(2) and (3) of Regulation 2017/1001, failing any details of the provision on which it was based, the earlier mark in question and the goods and services covered. It therefore found that ‘there was no request of proof of use filed for [the first] earlier mark’.

17 As regards the assessment of the merits of the opposition, the Board of Appeal found, in essence, that the goods in Class 12 covered by the trade mark application, namely ‘vehicles: apparatus for locomotion by land’, were identical to the goods ‘vehicles over land’ in the same class, in respect of which the first earlier mark was registered. With regard to the services in Class 35 covered by the trade mark application, the Board of Appeal found, first, that the services of ‘retailing of vehicles, apparatus for locomotion by land’ were similar to an average degree to the goods covered by the first earlier mark in Class 12 and, secondly, emphasised the complementary relationship between those services and the goods covered by the first earlier mark. On the other hand, it found that the ‘advertising and business management’ services in Class 35 were not similar to any of the goods covered by the first earlier mark. As regards the comparison of the signs, the mark applied for and the first earlier mark were, according to the Board of Appeal...

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