Judgments nº T-598/18 of Tribunal General de la Unión Europea, January 30, 2020

• Resolution Date: January 30, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-598/18

(EU trade mark - Opposition proceedings - Application for EU word mark BROWNIE - Earlier national word marks BROWNIES, BROWNIE, Brownies and Brownie - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Genuine use of the earlier mark - Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001))

In Case T-598/18,

Grupo Textil Brownie, SL, established in Barcelona (Spain), represented by D. Pellisé Urquiza and J.C. Quero Navarro, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, A. Folliard-Monguiral 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

The Guide Association, established in London (United Kingdom), represented by T. St Quintin, Barrister, and M. Jhittay, Solicitor,

ACTION brought against the decision of the Second Board of Appeal of the EUIPO of 4 July 2018 (Case R 2680/2017-2) relating to opposition proceedings between The Guide Association and Grupo Textil Brownie,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Registry of the Court on 4 October 2018,

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

having regard to the response of the intervener lodged at the Court Registry on 7 January 2019,

further to the hearing on 6 November 2019,

gives the following

Judgment

Background to the dispute

1 On 30 April 2015, Mr Juan Morera Morral 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 BROWNIE.

3 The goods and services in respect of which registration was sought are in Classes 18, 25 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 18: ‘Trunks and travelling bags; travelling trunks; trunks; wallets; bags for campers; sport bags; bags for climbers; beach bags; net bags for shopping; wheeled shopping bags; holdalls; shopping bags; envelopes, of leather, for packaging; handbags; cases, of leather or leatherboard; pouch baby carriers; satchels; cases, of leather or leatherboard; travel cases; vanity cases, not fitted; keycases; slings for carrying infants; haversacks; valises; suitcases; attache cases; backpacks; sling bags for carrying infants; purses; chain mesh purses; briefbags; music cases; garment bags for travel’;

- Class 25: ‘Clothing, footwear, headgear; coats; layettes; bathrobes; espadrilles; sleep masks; motorists’ clothing; bibs, not of paper; swimming costumes; bandanas [neckerchiefs]; sashes for wear; headbands [clothing]; bath slippers; bath sandals; smocks; robes; boas [necklets]; teddies [undergarments]; berets; footmuffs, not electrically heated; lace boots; boots; ski boots; football boots; booties; knickers [undergarments]; babies’ pants; socks; leg warmers; footwear; athletics shoes; beach shoes; pants; shirts; short-sleeve shirts; singlets; tee-shirts; bodices; hoods [clothing]; chasubles; waistcoats; shawls; goloshes; jackets; fishing vests; heavy jackets; rainproof clothing; cyclists’ clothing; belts (money -) [clothing]; belts [clothing]; caps; slips [undergarments]; ready-made clothing; combinations [clothing]; neckties; corselets; corsets; camisoles; collars; detachable collars; aprons [clothing]; sports shoes; masquerade costumes; petticoats; fur stoles; girdles [undergarments]; skirts; skorts; scarves; topcoats; gabardines [clothing]; gymnastic shoes; swimming caps; shower caps; ski gloves; gloves [clothing]; jumpers; leggings [trousers]; underwear; liveries; sock suspenders; stocking suspenders; muffs [clothing]; maniples; mantillas; stockings; stockings (sweat-absorbent -); hosiery; mittens; miters [clothing]; ear muffs [clothing]; trousers; tights; pocket squares [clothing]; neckerchiefs; parkas; slippers; shirt fronts; pelerines; pelisses; pinafore dresses; furs [clothing]; pyjamas; beachwear; gaiters; ponchos; knitwear [clothing]; neck scarfs; pullovers; cuffs [clothing]; leather clothing; clothing of imitations of leather; clothing for gymnastics; paper clothing; outerclothing; sweat-absorbent underwear; sandals; saris; sarongs; bathing drawers; briefs; skull caps; headgear for wear; hats; top hats; hats (paper -) [clothing]; brassieres; sweaters; stocking suspenders; wimples [clothing]; togas; trouser straps; costumes; wetsuits for water-skiing; turbans; uniforms; veils [clothing]; gowns; clothing; visors [headwear]; footwear; wooden shoes; clothing and ready-made clothing’;

- Class 35: ‘Retailing and wholesaling in shops and selling via the Internet of women’s clothing and articles and accessories for wear’.

4 The trade mark application was published in Community Trade Marks Bulletin No 106/2015 of 10 June 2015.

5 On 2 September 2015, the intervener, The Guide Association, 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 particular in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the series of earlier United Kingdom word marks BROWNIES, BROWNIE, Brownies and Brownie (taken together, ‘the earlier mark’), covering, inter alia, the goods and services in Classes 6, 18, 25, 26 and 41 and corresponding, for each of those classes, to the following description:

- Class 6: ‘Key rings’;

- Class 18: ‘Rucksacks; daysacks; bags for children’;

- Class 25: ‘Articles of clothing, all for girls’;

- Class 26: ‘Badges; emblems; ribbons; embroidery; patrol names, shoulder patches, all in the nature of embroidery; woggles’;

- Class 41: ‘Organisation of group activities in the education, cultural, training and entertainment fields; provision of courses of instruction and training in camping, sports, homemaking, wood-craft’.

7 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) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).

8 On 19 February 2016, Mr Morera Morral applied to register the transfer of his EU trade mark application to the applicant, Grupo Textil Brownie, SL in the European Union Trade Mark Register.

9 On 26 August 2016, the applicant requested, pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), that the intervener furnish proof that the earlier trade mark had been put to genuine use.

10 On 18 January 2017, the intervener produced several documents, consisting of an affirmed statement by its Corporate Resources Director (‘the affirmed statement’) and five annexes, as proof of genuine use of the earlier mark (‘the second series of documents’).

11 On 23 October 2017, the Opposition Division partially upheld the opposition in respect of the goods and services referred to in paragraph 3 above and rejected it as to the remainder. In particular, it considered that the intervener had furnished proof of genuine use of the earlier trade mark for the goods and services referred to in paragraph 6 above. In that regard, it relied not only on the documents produced by the intervener on 18 January 2017, expressly as proof of genuine use of the earlier mark (see paragraph 10 above), but also on documents, consisting of six annexes, which the intervener had already produced before EUIPO on 14 April 2016, together with the facts, evidence and observations in support of its opposition (‘the first series of documents’). In addition, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue with regard to the goods and services referred to in paragraph 3 above which were identical or similar to those in respect of which the intervener had furnished proof of genuine use of the earlier mark. However, where there was no similarity between those goods and services covered by the earlier mark and those in respect of which the applicant had sought to register the trade mark applied for, there was no link between the marks at issue with regard to the latter goods and services, and the ground of opposition laid down in Article 8(5) of Regulation No 207/2009 therefore had to be rejected.

12 On 18 December 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.

13 By decision of 4 July 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, first, it found that the intervener had furnished proof of genuine use of the earlier trade mark in respect of the goods and services referred to in paragraph 6 above (paragraphs 16 to 52 of the contested decision). Secondly, it adopted the grounds stated in the Opposition Division’s decision to the effect that the opposition had to be upheld in respect of the goods and services referred to in paragraph 3 above (paragraph 53 of the contested decision).

Forms of order sought

14 The applicant claims that...