Judgments nº T-654/18 of Tribunal General de la Unión Europea, March 26, 2020

Resolution DateMarch 26, 2020
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-654/18

(EU trade mark - Opposition proceedings - Application for the EU figurative mark le sac 11 - Earlier national word mark LESAC and earlier national figurative marks lesac - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Article 8(1)(b) of Regulation (EU) 2017/1001 - Genuine use of the earlier mark - Article 47(2) and (3) of Regulation 2017/1001) In Case T-654/18,

Giorgio Armani SpA, established in Milan (Italy), represented by S. Martínez-Almeida y Alejos-Pita, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

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

Felipe Domingo Asunción, residing in Madrid (Spain),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 August 2018 (Case R 2464/2017-4), relating to opposition proceedings between Mr Asunción and Giorgio Armani,

THE GENERAL COURT (First Chamber),

composed of V. Valančius, acting as President (Rapporteur), J. Svenningsen and U. Öberg, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 31 October 2018,

having regard to the response lodged at the Court Registry on 29 January 2019,

further to the hearing on 15 October 2019,

gives the following

Judgment

Background to the dispute

1 On 29 December 2014, the applicant, Giorgio Armani SpA, 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:

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3 The goods in respect of which registration was sought are in Classes 18 and 25 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: ‘Handbags; traveling bags; briefcases; leather briefcases; leather credit card holders; wallets; leather document briefcases; leather key cases; purses; suit cases; cosmetic bags sold empty; sports bags included in this class; bags for athletic equipment; evening and shoulder bags for ladies; leather shopping bags; school bags; garment bags for travel; suit carriers for travel; shoe bags for travel; beach bags; diaper bags; backpacks; Boston bags; traveling trunks; duffel bags; overnight bags; carry-on bags; satchels; opera bags; vanity cases (not fitted); cases and boxes made of leather; bags made of leather for packaging; leather straps’;

- Class 25: ‘Coats; jackets; trousers; skirts; tops; raincoats; overcoats; belts; braces for clothing; suits; stuff jackets; jumpers; jeans; dresses; cloaks; parkas; shirts; T-shirts; sweaters; underwear; baby dolls being nightwear; bathrobes; bathing costumes; négligée; swimsuits; dressing gowns; shawls; scarves; ties; neckties; sweat shirts; under shirts; polo shirts; body suits; shorts; stockings; socks; shoes; slippers; overshoes; galoshes; wooden clog; boots; ski boots; half boots; esparto shoes or sandals; sandals; bath sandals; gloves; mittens; hats and caps; visors (headwear)’.

4 On 30 April 2015, the other party to the proceedings before the Board of Appeal, Felipe Domingo Asunción, 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 the goods referred to in paragraph 3 above.

5 The opposition was based on the following earlier marks:

- the Spanish word mark LESAC, which was registered on 5 May 1980 under the number 919 900 and covers ‘handbags, purses, suitcases and wallets made from leather’ in Class 18;

- the Spanish figurative mark reproduced below, which was registered on 20 January 2000 under the number 2 244 284 and covers ‘ready-made clothing, footwear, headgear’ in Class 25:

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- the Spanish figurative mark reproduced below, which was registered on 20 October 2000 under the number 2 244 285 and covers ‘retail sales services’ in Class 35:

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6 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).

7 On 8 January 2016, the applicant made a request pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) for Mr Asunción to furnish proof of genuine use of the earlier marks.

8 On 20 September 2017, the Opposition Division found that genuine use of the earlier marks, in particular of the earlier word mark No 919 900 and earlier trade mark No 2 244 284, had been proved in relation to ‘handbags and purses made from leather’ in Class 18 and ‘ready-made clothing, footwear’ in Class 25 and upheld the opposition in respect of the goods referred to in paragraph 3 above.

9 On 17 November 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.

10 By decision of 13 August 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. First of all, it found that earlier trade mark No 2 244 285 had been put to genuine use in connection with ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ in Class 35 during the period which ran from 24 April 2010 to 23 April 2015. It added that those services and the goods covered by the mark applied for were aimed at the Spanish general public and that some of them were similar to a low degree and others were similar to an average degree. Next, it found that the mark applied for and earlier trade mark No 2 244 285 (taken together, ‘the signs at issue’) were visually similar to an above average degree and phonetically similar to a high degree and were not similar conceptually. It added that that earlier mark had an average degree of distinctiveness and that the end consumers had an average level of attention. Lastly, it deduced from the foregoing that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 regarding all the goods referred to in paragraph 3 above.

Forms of order sought

11 The applicant claims that the Court should:

- alter the contested decision by holding that the appeal before the Board of Appeal is well founded, that the opposition is to be rejected and that the mark applied for is to be registered;

- in the alternative, annul the contested decision;

- order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal.

12 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

Admissibility of the first head of claim

13 EUIPO submits that the first head of claim in the application is inadmissible since it seeks to have the Court issue directions to EUIPO.

14 It must be pointed out at the outset that the applicant’s first head of claim contains, inter alia, an application for alteration that seeks to have the Court register the mark applied for.

15 In that regard, it is true that the Court has jurisdiction under Article 72(3) of Regulation 2017/1001 to alter the decision of the Board of Appeal. Nevertheless, that power to alter the decision is intended to ensure that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation 2017/1001, which means that the admissibility of an application for alteration must be assessed in the light of the powers conferred on that Board of Appeal (see judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T-56/15, EU:T:2016:618, paragraph 12 and the case-law cited).

16 However, although the registration of an EU trade mark is a consequence of the finding that all the conditions laid down in Article 51 of Regulation 2017/1001 have been satisfied, the departments of EUIPO that are responsible for the registration of EU trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. Accordingly, a Board of Appeal, which may, under Article 71(1) of Regulation 2017/1001, either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further treatment, does not have the power to decide on an application which seeks to have it register an EU trade mark. Consequently, it is also not for the Court to rule on an application for alteration which seeks to have it alter the decision of a Board of Appeal to that effect (see judgment of 18 October 2016, Brauwelt, T-56/15, EU:T:2016:618, paragraph 13 and the case-law cited).

17 In the light of the foregoing, the applicant’s first head of claim must, in so far as it contains such an application, be rejected as inadmissible.

Substance

18 In support of the action, the applicant relies on four pleas in law, alleging: (i) infringement of Article 94(1) of Regulation 2017/1001, (ii) infringement of Article 8(1)(b) of that regulation as regards the scope of protection of earlier trade mark No 2 244 285, (iii) infringement of Article 18 and Article 47(2) of that regulation and, (iv) infringement of Article 8(1)(b) of that regulation as regards the existence of a likelihood of confusion.

The first plea, alleging infringement of Article 94 of Regulation 2017/1001

19 The applicant submits that the Board of Appeal infringed Article 94(1) of Regulation 2017/1001 by finding, without giving...

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