Judgments nº T-40/19 of Tribunal General de la Unión Europea, December 19, 2019

• Resolution Date: December 19, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-40/19

(EU trade mark - Opposition proceedings - Application for the EU figurative mark THE ONLY ONE by alphaspirit wild and perfect - Earlier EU word mark ONE - Relative grounds for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Article 8(5) of Regulation 2017/1001) In Case T-40/19,

Amigüitos pets & life, SA, established in Lorca (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and J. Crespo Carrillo, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

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

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 November 2018 (Case R 272/2018-4) relating to opposition proceedings between Société des produits Nestlé SA and Amigüitos pets & life,

THE GENERAL COURT (Fourth Chamber),

composed of S. Gervasoni, President, L. Madise and R. Frendo (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 21 January 2019,

having regard to the response of EUIPO lodged at the Court Registry on 25 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 28 March 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

1. Background to the dispute

   1 On 28 April 2016, the applicant, Amigüitos pets & life, 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:

   

   3 The goods in respect of which registration was sought are in Classes 5 and 31 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 5: ‘Dietary, protein and vitamin supplements for animals, in particular for dogs; Feeding stimulants for animals, including food coatings for giving medicines; Trace elements (Preparations of -) for human and animal use; Protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; Medicated supplements for foodstuffs for animals; Medicated additives for animal foods; Animal washes; Antiparasitic collars for animals; Attractants for pet animals; Animal dips [preparations]; Animal flea collars; Animal sperm; Animal semen for animal insemination; Animal repellent formulations; Medicines for veterinary purposes; Absorbent diapers of cellulose for pets; Powders for killing fleas on animals; Pharmaceutical preparations for animal skincare; Pharmaceutical preparations for animals, Animal washes, Disposable housebreaking pads for pets; Skin treatment [medicated] for animals; Foot rot vaccines; Vitamins for animals; Animal washes and lotions; Parasiticides; Antiparasitic preparations; Antiparasitic collars for animals; Bacterial and bacteriological preparations for veterinary use; Enzyme preparations for veterinary purposes; Amino acids for veterinary purposes, Greases for veterinary purposes, Medicines for veterinary purposes, Cement for animal hooves, pharmaceuticals and veterinary preparations; Hygiene products for medical purposes’;

   - Class 31: ‘Foodstuffs for animals, foodstuffs for dogs; Foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; Foodstuffs in the form of cubes, rings and sticks for dogs; Canned foodstuffs for dogs; Cheese flavoured foodstuffs for dogs; Food for racing dogs; Beverages for canines; Dog treats [edible]; Foodstuffs for dogs; Dog biscuits; Bones for dogs; Digestible chewing bones for dogs; Milk for use as foodstuffs for dogs; Litter for dogs; Foodstuffs for dogs; Food preparations for dogs; Edible chewing products for dogs, live animals; Seeds, natural plants and flowers; Agricultural, horticultural and forestry products and grains not included in other classes; Mash for fattening domestic animals; Strengthening animal forage; Edible chews for animals; Bird food; Dog biscuits; Proteins for foodstuffs for animals, aromatic sand for pets, beverages for pet animals, products for animal beds, treats for animals’.

   4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/11 of 27 June 2016.

   5 On 21 September 2016, the intervener, Société des Produits Nestlé S.A., filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation No 2017/1001) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

   6 The opposition was based on the EU word mark ONE, filed on 23 December 2013 and registered on 6 May 2014 under No 012460275, which covers goods in Class 31 corresponding to the following description: ‘Foodstuffs for animals’.

   7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

   8 On 7 December 2017, the Opposition Division held that the mark applied for was likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark ONE and, consequently, upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001 for most goods in Classes 5 and 31. On the other hand, the Opposition Division rejected the opposition on the basis of Article 8(1)(b) and (5) of that regulation for ‘trace elements (preparations of -) for human and animal use’ in Class 5 and ‘flowers’ in Class 31.

   9 On 7 February 2018, 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.

   10 By decision of 19 November 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal against the decision of the Opposition Division. More specifically, it upheld the intervener’s opposition, first, on the grounds set out in Article 8(1)(b) of Regulation 2017/1001, for identical or similar goods, and, secondly, on the grounds set out in Article 8(5) of Regulation 2017/1001, for goods with a low degree of similarity and for dissimilar goods.

2. Forms of order sought

   11 The applicant claims that the Court should:

   - annul the contested decision;

   - order registration of the mark applied for in respect of all the goods for which protection is sought;

   - order the intervener and, where appropriate, EUIPO to pay the costs, including those incurred before EUIPO.

   12 EUIPO and the intervener contend that the Court should:

   - dismiss the action;

   - order the applicant to pay the costs.

3. Law

   A. Admissibility

   1. Admissibility of the action

      13 The intervener disputes the formal admissibility of the action, relying on infringement of Articles 177(5) and 51(3) of the Rules of Procedure of the General Court. According to the applicant, the action is inadmissible in so far as the ‘Power of Attorney’ lodged at the Court Registry was signed by a person who is not listed as the applicant’s legal representative in the extract from the business registry attached to the application.

      14 As a preliminary point, it should be noted that the intervener claims that it is not apparent from the documents submitted before the Court that the power of attorney was signed by the applicant’s legal representative. In that regard, however, it is sufficient to note that, under Article 51(3) of the Rules of Procedure, to which Article 177(5) thereof explicitly refers, lawyers are required, where the party they represent is a legal person governed by private law, to lodge at the Registry an authority to act given by that person, which has been done in this instance. It follows that, contrary to what the intervener claims, that article, unlike Article 44(5)(b) of the Rules of Procedure of the General Court of 2 May 1991, no longer requires proof that the authority granted to the lawyer was conferred on him by someone authorised for the purpose (judgment of 28 September 2016, European Food v EUIPO - Société des produits Nestlé (FITNESS), T-476/15, EU:T:2016:568, paragraph 19).

      15 It is therefore necessary to reject the intervener’s arguments as to the formal inadmissibility of the action.

   2. Admissibility of the applicant’s second head of claim

      16 By its second head of claim, the applicant requests, in substance, that the Court order EUIPO to register the mark applied for in respect of all the goods covered by it.

      17 It is clear from settled case-law that, in an action before the EU Courts against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature. It is therefore not for the General Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see judgment of 11 July 2007, El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños)...