Judgments nº T-77/19 of Tribunal General de la Unión Europea, March 26, 2020

• Resolution Date: March 26, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-77/19

(EU trade mark - Opposition proceedings - Application for EU figurative mark alcar.se - Earlier EU word mark ALCAR - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-77/19,

Alcar Aktiebolag, established in Bromma (Sweden), represented by M. Ateva, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

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

Alcar Holding GmbH, established in Vienna (Austria), represented by C. Onken, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 November 2018 (Case R 378/2018-1) relating to opposition proceedings between Alcar Holding and Alcar Aktiebolag,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, C. Iliopoulos and R. Norkus (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 February 2019,

having regard to the response of EUIPO lodged at the Court Registry on 16 May 2019,

having regard to the response of the intervener lodged at the Court Registry on 11 June 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 3 June 2016, the applicant, Alcar Aktiebolag, 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 services in respect of which registration was sought are in Classes 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, for each of those classes, to the following description:

- Class 35: ‘Dealer services in relation to vehicles and boats; sales of vehicles and boats; advertising services relating to the sale of motor vehicles and boats’;

- Class 39: ‘Vehicle and boat renting services; providing information about automobiles and boats for lease by [means] of the internet; motor land vehicle and boat hire services’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/116 of 23 June 2016.

5 On 22 September 2016, the intervener, Alcar Holding GmbH, 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, first, in respect of certain services in Class 35, namely ‘dealer services in relation to vehicles; sales of vehicles; advertising services relating to the sale of motor vehicles’ and, second, in respect of certain services in Class 39, namely ‘vehicle renting services; providing information about automobiles for lease by [means] of the internet; motor land vehicle hire services’.

6 The opposition was based on the earlier EU word mark ALCAR, registered on 23 July 2004 under No 2 800 811.

7 That earlier mark designates goods in Classes 6, 7 and 12 and corresponding, for each of those classes, to the following description:

- Class 6: ‘Anti-theft devices for wheels (wheel clamps)’;

- Class 7: ‘Exhaust systems’;

- Class 12: ‘Vehicle parts and accessories, namely disc edges of aluminium or steel, wheel nuts and wheel screws, valves for pneumatic tyres, snow chains’.

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

9 By decision of 19 December 2017, the Opposition Division rejected the opposition in respect of all the services referred to in paragraph 5 above.

10 On 16 February 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.

11 By decision of 18 November 2018 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the intervener’s appeal in its entirety and annulled the Opposition Division’s decision of 19 December 2017, thereby concluding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. In particular, according to the Board of Appeal, in the first place, the likelihood of confusion must be assessed from the perspective both of the general public and of the specialist public, who have a high level of attention on account of, inter alia, the price, infrequent purchase and technical complexity of the goods and services in question. In the second place, as regards the comparison of the goods and services in question, the Board of Appeal considered in particular that, given the fact that those goods and services are to some extent complementary and the fact that they may be distributed via the same distribution channels, their degree of similarity is average. As regards, in the third place, the comparison of the signs at issue, those signs are highly visually and phonetically similar, in particular because they coincide as to their first five letters, namely the word element ‘alcar’. The presence of the element ‘.se’ and the slight stylisation of the mark applied for are not such as to reduce the overall impression of similarity between them. As the marks at issue do not convey any meaning to the relevant public, the Board of Appeal considered their conceptual comparison to be neutral. In the fourth place, the earlier mark has average distinctive character. In those circumstances, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public, which led it to annul the Opposition Division’s decision and uphold the opposition in its entirety.

Forms of order sought

12 The applicant claims that the Court should:

- stay the proceedings before it until the revocation proceedings against the earlier mark have been concluded and the real scope of protection of that mark has been determined;

- annul the contested decision;

- uphold the Opposition Division’s decision;

- order the intervener to bear the costs of the proceedings before the Opposition Division, the Board of Appeal and the General Court.

13 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

Admissibility of the action

14 The intervener disputes the admissibility of the present action on the ground that the application contains neither the statement of the pleas in law relied on nor the matters of law on which the action is based, in breach of, inter alia, Article 177(1)(d) of the Rules of Procedure of the General Court.

15 In that regard, it should be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 thereof, and to Article 177(1)(d) of the Rules of Procedure, the application must contain, inter alia, the subject matter of the dispute and a brief statement of the pleas in law on which it is based. Those particulars must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any further information. In order to guarantee legal certainty and sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars relied on be indicated, at least in summary form, coherently and intelligibly in the application itself (see order of 25 June 2019, Eaglestone v EUIPO - Eaglestone (EAGLESTONE), T-82/19, not published, EU:T:2019:484, paragraph 20 and the case-law cited).

16 More specifically, whilst it should be acknowledged, first, that the statement of the pleas in the application need not conform with the terminology and layout of the Rules of Procedure and, second, that the pleas may be expressed in terms of their substance rather than of their legal classification, the application must nonetheless set out those pleas with sufficient clarity. Moreover, a mere abstract statement of the pleas in law in the application does not satisfy the requirements of the Statute of the Court of Justice of the European Union or the Rules of Procedure, and the expressions ‘brief statement of the pleas in law’ and ‘summary of those pleas in law’ used therein mean that the application must specify on what pleas the action is based (judgment of 28 September 2016, Pinto Eliseu Baptista Lopes Canhoto v EUIPO - University College London (CITRUS SATURDAY), T-400/15, not published, EU:T:2016:569, paragraph 43).

17 It should be pointed out that, in the present case, the applicant does not rely on any specific provision that may have been infringed by the contested decision.

18 The fact remains that, as is apparent from the applicant’s written pleadings, the applicant seeks to show that there is no likelihood of confusion between the mark applied for and the earlier mark with regard to the goods and services in question.

19 In so doing, it is, in essence, claiming infringement of Article 8(1)(b) of Regulation 2017/1001.

20 It follows that the intervener’s argument alleging that the action is inadmissible must be rejected as unfounded.

Substance

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