Judgments nº T-524/18 of Tribunal General de la Unión Europea, December 04, 2019

• Resolution Date: December 04, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-524/18

(EU trade mark - Opposition proceedings - Application for the EU word mark Billa - Earlier EU word marks BILLABONG - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Comparison of the goods and services - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-524/18,

Billa AG, established in Wiener Neudorf (Austria), represented by J. Rether, M. Kinkeldey, J. Rosenhäger and S. Brandstätter, lawyers,

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

Boardriders IP Holdings LLC, established in Huntington Beach, California (United States), represented by J. Fish, Solicitor, and A. Bryson, Barrister,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 21 June 2018 (Case R 2235/2017-4), as rectified on 4 October 2018, relating to opposition proceedings between Boardriders IP Holdings and Billa,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 29 August 2018,

having regard to the response of EUIPO lodged at the Court Registry on 13 November 2018,

having regard to the response of the intervener lodged at the Court Registry on 5 November 2018,

further to the hearing on 11 September 2019,

gives the following

Judgment

Background to the dispute

1 On 21 February 2013, the applicant, Billa AG, 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 Billa.

3 The goods and services in respect of which registration was sought are in, inter alia, according to the wording of the application for registration, Classes 14, 18, 25, 28 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 14: ‘Precious metals and their alloys and goods made from precious metals and their alloys; not included in any other classes; jewellery; ornaments [jewellery, jewelry (Am)]; precious stones; horological and chronometric instruments’;

- Class 18: ‘Leather and imitations of leather and goods made therefrom; all the aforesaid goods included in class 18; animal skins, hides; trunks and travelling bags; umbrellas; parasols, sunshades’;

- Class 25: ‘Outerclothing and underwear for women; men; children and infants, including sportswear; belts; collar protectors; stockings; hosiery; footwear; headgear for wear; gloves; heated clothing’;

- Class 28: ‘Games; toys; gymnastic and sports articles; in class 28’;

- Class 35: ‘Bringing together of a variety of goods, for advertising purposes; enabling customers to conveniently view and purchase those goods; providing information to consumers and customers in relation to the price and quality of goods (consumer consultancy); business administration; radio advertising; television advertising; advertising; marketing; promotional services and merchandising; camping articles; clothing; electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles; billing; payment procedures for telephone cards; arranging contracts, for others, regarding the use of charges for mobile telephone cards (prepaid)’.

4 The trade mark application was published in Community Trade Marks Bulletin No 69/2013 of 12 April 2013.

5 On 11 July 2013, the intervener, Boardriders IP Holdings LLC, 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 some of the goods and services concerned.

6 The opposition was based on, inter alia, the following earlier rights:

- the earlier EU word mark BILLABONG, filed on 7 June 2005 and registered on 5 March 2007 under the number 4 474 268, covering goods in Classes 14, 18, 25 and 28 corresponding, for each of those classes, to, inter alia, the following description:

- Class 14: ‘Jewellery and costume jewellery; charms; ornaments of precious metal, including, ornamental pendants and ornamental pins; cuff links; precious gemstones and semiprecious gemstones; watches and clocks, and parts of the foregoing goods; watch accessories, including, watch bands, watch chains, watch straps and watch cases; jewellery cases and jewellery boxes of precious metal, precious metal alloys or coated therewith; medallions and badges of precious metal, precious metal alloys or coated therewith; key rings, key cases, key tags and key fobs, all of precious metal, precious metal alloys or coated therewith’;

- Class 18: ‘Chamois leather (other than for cleaning purposes), bags including beach bags, all purpose sports bags, all purpose athletic bags, barrel bags, tote bags, carry-all bags, shopping bags of leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, handbags, clutch bags, waistpacks, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty; travel bags, trunks, luggage, carry-on bags, garment bags for travel, and other travel goods in this class; cases including travel eases, overnight cases, briefcases, document cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, vanity cases; jewellery bags for travel; pouches in this class; wallets; purses, key cases; key chains, key fobs and key tags, all being of leather, animal hides and imitations thereof; umbrellas’;

- Class 25: ‘Clothing, footwear, headgear’;

- Class 28: ‘Sporting goods, parts, fittings and accessories for the aforegoing goods’.

- the earlier EU word mark BILLABONG, filed on 20 June 2005 and registered on 9 February 2007 under the number 4 497 202, covering services in Class 35 corresponding to the following description: ‘Retailing of, optical apparatus and eyewear, including spectacles, sunglasses, eyeshades, anti-glare visors and glasses, goggles including goggles for swimming, skiing and snowboarding, glasses, eyewear cases, eyewear accessories including straps, chains and cords, protective clothing including diving suits, storage media and apparatus for recording, storage, transmitting, reproducing or processing data, sound and/or images including magnetic data carriers, tapes, cassettes and discs, audio tapes, pre-recorded films including video films, telecommunications equipment, apparatus, instruments and devices including mobile telephones, videophones, and other handheld communications apparatus, messaging devices, parts, fittings and accessories for all of the aforegoing goods and including mobile telephone housings, MP3 players, jewellery and costume jewellery, charms, ornaments of precious metals, including ornamental pendants and ornamental pins, cuff links, precious gemstones and semiprecious gemstones, watches and clocks and parts of the foregoing goods, watch accessories, including watch bands, watch chains, watch straps and watch cases, jewellery cases and jewellery boxes of precious metal, precious metal alloys or coated therewith, key rings, key cases, key tags and key fobs, all of precious metal, precious metal alloys or coated therewith, chamois leather (other than for cleaning purposes), bags including beach bags, all purpose sports bags, all purpose athletic bags, barrel bags, tote bags, carry-all bags, shopping bags or leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, handbags, clutch bags, waistpacks, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty, travel bags, trunks, luggage, carry-on bags, garment bags for travel, and other travel goods, cases including travel cases, overnight cases, briefcases, document cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, vanity cases, jewellery bags for travel, pouches, wallets, purses, key cases, key chains, key fobs and key tags, all being of leather, animal hides and imitations thereof, umbrellas, clothing, footwear, headgear, including shirts, T-shirts, singlets, blouses and tops, sweaters, jackets, pullovers, coats, dresses, skirts, sarongs, trousers, pants, jeans, shorts, board shorts, surfwear, swimwear, sportswear, underwear, sleepwear, belts, scarves, gloves, hosiery, socks, shoes, boots, sandals, slides, things and slippers, hats, caps, beanies, peaks and visors, wetsuits, wetsuit vests, boots, gloves and hoods, wetsuit shorts and tops, sporting goods, parts, fittings and accessories for the aforegoing goods, including surfboards, sailboards, kiteboards, bodyboards, wake boards, waterskis, sporting goods for other water sports, scooters (toys), skateboards, rollerblades, roller skates, parts, fittings and accessories for all of the aforegoing goods, bags and covers for sporting goods, surfing traction systems, grips, legropes and tethers for sporting goods, waxes for surfboards, skateboards, skis, other sporting goods and related sporting accessories; loyalty programs; loyalty card programs; discount card schemes; incentive schemes, advertising and promotional services in this class namely consumer loyalty programs; loyalty programs; promoting the goods and services of others by means of offering discounts...