Judgments nº T-296/19 of Tribunal General de la Unión Europea, March 12, 2020

• Resolution Date: March 12, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-296/19

(EU trade mark - Opposition proceedings - Application for EU word mark SUM011 - Prior figurative EU word mark Sumol and prior national word mark SUMOL - Relative ground for refusal - No likelihood of confusion - No similarity of the goods and services - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-296/19,

Sumol + Compal Marcas, SA, established in Carnaxide (Portugal), represented by J.M. Pimenta and A.M. Sebastião, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, J. Crespo Carrillo and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being:

Heretat Mont-Rubi, SA, established in Font-Rubi (Spain),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 February 2019 (Case R 1662/2018-5), relating to opposition proceedings between Sumol + Compal Marcas and Heretat Mont-Rubi,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, Z. Csehi (Rapporteur) and G. Steinfatt, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 6 May 2019,

having regard to the response lodged at the Court Registry on 7 August 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

Background to the dispute

1 On 23 February 2015, Heretat Mont-Rubi, 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 word sign SUM011.

3 The goods and services for which registration was sought fall within Classes 33, 35 and 39 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, in relation to each of those classes, to the following description:

- Class 33: ‘Alcoholic beverages (except beers), wine; alcoholic fruit extracts; cava; rice alcohol, anise (liqueur); brandy; sparkling wines; liqueurs’;

- Class 35: ‘Business management in the food industry and beverages; retailing of wine, alcoholic beverages and foodstuffs; procurement, for others, of wine, alcoholic beverages and foodstuffs; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes; sales promotion’;

- Class 39: ‘Arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to ecotourism, wine culture, gastronomy and cultural and architectural heritage; conducting of guided visits to wineries; tour guide services; escorting of travellers and sightseeing (tourism); tour reservation services; packaging and packing of beverages; storage, sending, transport, distribution and delivery of beverages’.

4 The trade mark application was published in the European Union Trade Marks Bulletin of 2 March 2015.

5 On 2 June 2015, the applicant, Sumol + Compal Marcas, SA, 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 goods and services referred to in paragraph 3 above.

6 The opposition was based, first, on the following earlier EU figurative mark:

7 The earlier EU mark, which was registered on 2 June 2012 under number 10527042, covers goods in Classes 30, 32 and 33 corresponding, for each of those classes, to the following description:

- Class 30: ‘Beverages based on chocolate, cocoa, coffee, tea, coffee substitutes and other cereals’;

- Class 32: ‘Beverages, namely organic fruit juices, drinking waters, flavoured waters, mineral and aerated waters and other non-alcoholic drinks; Beers; Energy and sports drinks; Soft drinks, crushed-ice drinks, fruit drinks and aerated fruit juice drinks; Vegetable and plant juices; Syrups for beverages, concentrates, powders and other preparations for making beverages’;

- Class 33: ‘Alcoholic beverages (except beer); alcoholic beverages containing fruit juices’.

8 The opposition was based, secondly, on the earlier Portuguese word mark SUMOL, registered on 2 September 1957, for goods in Class 32 and corresponding to the following description: ‘Non-alcoholic drinks and fruit juices’.

9 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).

10 On 26 June 2018, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion as regards the following goods and services:

- Class 33: ‘Alcoholic beverages (except beers), wine; alcoholic fruit extracts; cava; rice alcohol, anise (liqueur); brandy; sparkling wines; liqueurs’;

- Class 35: ‘Retailing of wine, alcoholic beverages’.

11 On 23 August 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.

12 By decision of 12 February 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal in part and also rejected the application for registration in respect of the following services:

- Class 35: ‘Procurement, for others, of wine, alcoholic beverages’;

- Class 39: ‘Arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to ecotourism, wine culture; conducting of guided visits to wineries; storage, sending, transport, distribution and delivery of beverages’.

13 In particular, the Board of Appeal took the view that there was also a likelihood of confusion in respect of the services referred to in paragraph 12. Unlike the Opposition Division, it found that those services were similar to a low degree to the goods covered by the earlier EU mark.

14 Furthermore, the Board of Appeal dismissed the appeal before it in respect of the following services, which were found to be different from the goods covered by the earlier marks:

- Class 35: ‘Business management in the food industry and beverages; retailing of foodstuffs; procurement, for others, of foodstuffs; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes; sales promotion’;

- Class 39: ‘Arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to gastronomy and cultural and architectural heritage; tour guide services; escorting of travellers and sightseeing (tourism); tour reservation services; packaging and packing of beverages’.

Forms of order sought

15 The applicant claims that the Court should:

- alter the contested decision and order the rejection of the application for registration of the mark applied for in respect of the ‘remaining services in Classes 35 and 39’;

- order the other parties to pay the costs of the present proceedings, as well as those of the opposition and appeal proceedings before EUIPO.

16 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

Admissibility of the first head of claim

17 EUIPO submits that the first head of claim is inadmissible in so far as it concerns the upholding of the opposition and the rejection of the mark applied for in respect of the services in Classes 35 and 39, in respect of which the Board of Appeal dismissed the appeal before it.

18 In that regard, it must be recalled that the General Court has jurisdiction, under Article 72(3) of Regulation No 2017/1001, either to annul the contested decision or to alter it by adopting the decision which the Board of Appeal should have made.

19 In addition, it must be pointed out that, where the applicant seeks to have the decision of the Board of Appeal altered, without seeking the annulment of that decision, the application for alteration necessarily includes an application for annulment (see, to that effect, judgment of 7 November 2013, Budziewska v OHIM - Puma (Bounding feline), T-666/11, not published, EU:T:2013:584, paragraph 18 and the case-law cited).

20 In the present case, it is apparent from the content of the application that, by the present action, the applicant essentially seeks, first, the annulment in part of the contested decision on the ground that the Board of Appeal wrongly concluded that there was no similarity between the goods and services at issue and, second, the amendment of the contested decision in that respect.

21 In so far as the appellant requests the Court to order the rejection of the application for registration of the trade mark applied for in respect of the services in Classes 35 and 39 in respect of which its appeal was dismissed by the Board of Appeal, it must be held that the applicant is essentially asking the Court to adopt the decision which, in its view, EUIPO should have taken, that is to say, a decision finding that the conditions of opposition are satisfied, so that EUIPO enforces it by refusing registration of the trade mark applied for in respect of those services. Accordingly, the applicant requests that the contested decision be altered, as provided for in Article 72(3) of Regulation 2017/1001. That is not a request to the Court to require EUIPO to do or to refrain from doing something, which would...