Judgments nº T-76/19 of Tribunal General de la Unión Europea, May 13, 2020

Resolution DateMay 13, 2020
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-76/19

(EU trade mark - Opposition proceedings - Application for EU figurative mark pontinova - Earlier national word mark PONTI - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Relevant public - Similarity of the services - Similarity of the signs - Global assessment of the likelihood of confusion)

In Case T-76/19,

Pontinova AG, established in Zurich (Switzerland), represented by L. Röh, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,

defendant,

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

Ponti & Partners, SLP, established in Barcelona (Spain),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 27 November 2018 (Case R 566/2018-5), relating to opposition proceedings between Ponti & Partners and Pontinova,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, D. Gratsias and T. Perišin (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 7 February 2019,

having regard to the response of EUIPO lodged at the Court Registry on 23 May 2019,

having regard to the order made today, Pontinova v EUIPO - Ponti & Partners (pontinova) (T-76/19, not published), refusing to grant the other party to the proceedings before the Board of Appeal the status of intervener,

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 29 September 2016, the applicant, Pontinova AG, 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 services in respect of which registration was sought are in Class 45 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 to the following description: ‘Legal services’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/193 of 11 October 2016.

5 On 9 January 2017, Ponti & Partners, SLP, 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 trade mark applied for in respect of the services referred to in paragraph 3 above.

6 The opposition was based, inter alia, on the earlier Spanish word mark PONTI, filed on 19 July 2000 and registered on 19 March 2001 under Number 2 334 075 for services in Class 42 corresponding to the following description: ‘Industrial and Intellectual property consultancy services’.

7 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).

8 On 31 January 2018, the Opposition Division upheld the opposition.

9 On 27 March 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.

10 By decision of 27 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it found, first, that, in so far as the services covered by the mark applied for include the services covered by the earlier mark, the services at issue had to be regarded as identical. Second, it noted that the relevant public is made up both of companies and individuals and that its level of attention is higher than average. Third, the Board of Appeal took the view that the signs at issue are visually and aurally similar to an average degree and that the conceptual comparison had no effect on the overall impression. Finally, it noted that, given that the services at issue are identical, a lesser degree of similarity between the signs at issue was sufficient for it to be found that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 between the marks at issue.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO and Ponti & Partners to pay the costs.

12 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that the Board of Appeal was wrong to find that there is a likelihood of confusion.

14 EUIPO disputes the applicant’s arguments.

15 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services identified (see judgment of 9 July 2003, Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM - easyGroup IP Licensing (easyHotel), T-316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

18 It is in the light of the abovementioned principles that it is necessary to examine whether the Board of Appeal was right to find that there is a likelihood of confusion between the marks at issue in the present case.

The relevant public

19 The Board of Appeal found that the relevant public consists both of companies and individuals, that that public’s level of attention is higher than average, and that the relevant territory is Spain.

20 Those findings by the Board of Appeal, which, moreover, are not disputed by the applicant, must be upheld.

The comparison of the services

21 According to settled case-law, in assessing the similarity of the services in question, all the relevant factors relating to those services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the services concerned (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

22 In the present case, the Board of Appeal found that, since the services covered by the mark applied for include the services covered by the earlier mark, the services at issue had to be regarded as identical.

23 The applicant contends that the services covered by the mark applied for are neither highly identical nor highly similar to the services designated by the earlier mark. In that regard, the applicant submits that services covered by the earlier mark are in Class 42 and, therefore, relate to industrial and intellectual property, whereas the services covered by the mark applied for are in Class 45 and therefore relate to legal services. Intellectual property consultancy services differ substantially from the services offered by a law firm which does not provide services in that field.

24 According to the applicant, the services provided by a law firm consist in offering legal advice and representing clients before the courts and can be provided only by lawyers holding a licence. By contrast, intellectual property consultancy services are part of consultancy services, which are general services offered by a wide variety of professionals, such as professionals in the economic, financial or legal sphere, and do not require a licence or particular training.

25 EUIPO disputes the applicant’s arguments.

26 First, it should be noted that the classification of goods and services under the Nice Agreement is to serve purely administrative purposes. Therefore, goods and services may not be regarded as different on the ground that they appear in different classes under that classification (see, to that effect, judgment of 6 June 2018, Uponor Innovation v EUIPO - Swep International (SMATRIX), T-264/17, not published, EU:T:2018:329, paragraph 26).

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