Judgments nº T-63/19 of Tribunal General de la Unión Europea, May 13, 2020

Resolution DateMay 13, 2020
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-63/19

(EU trade mark - Opposition Proceedings - International registration designating the European Union - Figurative mark РОШЕН - Earlier international figurative mark ромашки - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-63/19,

Rot Front OAO, established in Moscow (Russia), represented by M. Geitz and J. Stock, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Fischer 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

Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’, established in Kiev (Ukraine), represented by I. Lukauskienė, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 16 November 2018 (Case R 1872/2018-2), relating to opposition proceedings between Rot Front and Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, A. Marcoulli (Rapporteur) and A. Kornezov, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 31 January 2019,

having regard to the response of EUIPO lodged at the Court Registry on 26 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 25 April 2019,

further to the hearing on 28 November 2019, in which the intervener did not participate,

gives the following

Judgment

Background to the dispute

1 On 12 December 2016, the intervener, Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’ requested the protection in the European Union of the international registration No 1233784. That registration was notified to the European Union Intellectual Property Office (EUIPO) on 4 May 2017, 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 The international registration in respect of which protection in the European Union was sought is the following figurative sign:

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3 The goods in respect of which protection was sought are in Class 30 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: ‘Candies, chocolate, chocolate candies’.

4 On 18 July 2017 the applicant, Rot Front OAO, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the registration of the mark applied for.

5 The opposition was based on the earlier international mark No 1194309, designating Germany, Spain, France, Greece, Latvia and Lithuania, registered on 13 November 2013 for goods in Class 30 and corresponding to the following description: ‘sweetmeats (candy)’, except for Latvia, where a restriction rendered the goods as follows: ‘sweetmeats (candy) except milk-based candy’, as reproduced below:

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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 24 July 2018, the Opposition Division upheld the opposition and rejected the application for registration.

8 On 24 September 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.

9 By decision of 16 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division and rejected the opposition in its entirety, holding that there was no likelihood of confusion between the marks at issue.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

11 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

12 The intervener submits that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

13 In support of its action, the applicant raises six pleas in law, alleging, respectively:

- first, misapplication of Article 94(1) of Regulation 2017/1001 and of the right to be heard because the Board of Appeal based its decision on facts which were not presented by either of the parties;

- second, misapplication of Article 94(1) of Regulation 2017/1001 and of the right to be heard, in that the Board of Appeal did not base its decision on facts presented by the applicant;

- third, misapplication of Article 47(5) and Article 8(1)(b) of Regulation 2017/1001, with regard to the assessment of the distinctive character of the earlier mark;

- fourth, misapplication of Article 47(5) and Article 8(1)(b) of Regulation 2017/1001, with regard to the assessment of the similarity of the signs;

- fifth, misapplication of Article 47(5) and Article 8(1)(b) of Regulation 2017/1001, with regard to the assessment of the likelihood of confusion;

- sixth, misapplication of Article 94(1) of Regulation 2017/1001 and of the right to be heard, with regard to the assessment of the likelihood of confusion.

14 Accordingly, in essence, the applicant alleges, first, infringement of Article 8(1)(b) and Article 47(5) of Regulation 2017/1001 (third, fourth and fifth pleas in law) and, second, infringement of Article 94(1) of that regulation and of the right to be heard (first, second and sixth pleas in law).

15 In that context, it is necessary to examine, first, the third, fourth and fifth pleas in law, namely the infringement of Article 8(1)(b) and Article 47(5) of Regulation 2017/1001.

16 As a preliminary remark, it should be noted that Article 47(5) of Regulation 2017/1001 limits itself to providing that ‘if examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the EU trade mark application has been made, the application shall be refused in respect of those goods or services’ and that ‘otherwise the opposition shall be rejected’. Although the applicant alleges infringement of that provision, it must be held that, in the submissions made in the context of the third, fourth and fifth pleas, the applicant does not put forward any arguments specifically aimed at the content of that provision, but rather refers to the factual preconditions for the application of Article 8(1) b) of that regulation.

17 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark. Furthermore, under Article 8(2)(a)(iii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

18 According to settled case-law, the risk that the public may 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 that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and 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 covered (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).

19 For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue 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).

Preliminary observations

20 As regards, first, the relevant territory, in paragraph 15 of the contested decision, the Board of Appeal found, in essence, that the relevant territory was that of Greece, France, Spain, Germany, Latvia and Lithuania, since the earlier mark was protected in those Member States. Having regard to the facts of the case, there is no reason to call into question such a finding, which is, moreover, not disputed by the applicant.

21 Secondly, as regards the relevant public, in paragraph 16 of the contested decision, the Board of Appeal considered that the relevant public consisted of the general public in the relevant territories. The Board of Appeal added that the public’s level of attention was below average, since the trade marks at issue concerned goods such as inexpensive sweets, including toffees or sucking sweets, and that this was not affected by the intervener’s argument that the level of attention could be high in relation to luxury goods.

22 Nor is there any reason to call into question the definition of the relevant public, which, moreover, is not disputed by the parties. In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer...

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