Judgments nº T-329/19 of Tribunal General de la Unión Europea, January 20, 2021

• Resolution Date: January 20, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-329/19

(EU trade mark - Opposition proceedings - Application for EU figurative mark BE EDGY BERLIN - Earlier national word mark EDJI - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T-329/19,

12seasons GmbH, established in Berlin (Germany), represented by M. Gail, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,

defendant,

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

Société immobilière et mobilière de Montagny, established in Roanne (France), represented by A. Grolée, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 March 2019 (Case R 1522/2018-5), relating to opposition proceedings between Société immobilière et mobilière de Montagny and 12seasons,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, V. Kreuschitz and G. Steinfatt (Rapporteur), Judges,

Registrar: E. Coulon,

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

having regard to the response of EUIPO lodged at the Court Registry on 31 October 2019,

having regard to the response of the intervener lodged at the Court Registry on 3 December 2019,

having regard to the request for a hearing lodged by the applicant and having decided, pursuant to Article 106(1) of the Rules of Procedure of the General Court, to open the oral part of the procedure,

having regard to the letter by which the applicant stated that it was withdrawing its request to present oral argument at a hearing and, after considering that it had sufficient information available to it from the documents in the file, and having decided to close the oral part of the procedure,

gives the following

Judgment

Background to the dispute

1 On 28 October 2016, the applicant, 12seasons GmbH, 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 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: ‘Leather and imitations of leather, and goods made of leather and imitations of leather, namely briefcases, beach bags, wallets, shopping bags, handbags, bags (game -) [hunting accessories], holdalls, backpacks, satchels, casual bags; bags [envelopes, pouches] of leather, for packaging; animal skins, hides; trunks and travelling bags; umbrellas; parasols; walking sticks; whips; harnesses; saddlery’;

- Class 25: ‘Clothing, in particular belts; footwear, in particular insoles; headgear.’

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/231 of 6 December 2016.

5 On 12 January 2017, the intervener, Société immobilière et mobilière de Montagny, 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 all the goods referred to in paragraph 3 above.

6 The opposition was based, inter alia, on the earlier French word mark EDJI, filed on 9 December 2011 and registered on 28 February 2014, under No 113880373, for goods and services in Classes 9, 14, 18, 25 and 35.

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 By decision of 8 June 2018, the Opposition Division upheld the opposition in part in respect of ‘goods made of leather and imitations of leather, namely briefcases, beach bags, wallets, shopping bags, handbags, bags (game -) [hunting accessories], holdalls, backpacks, satchels, casual bags; bags [envelopes, pouches] of leather, for packaging; trunks and travelling bags’ in Class 18 and ‘clothing, in particular belts; footwear, in particular insoles; headgear’ in Class 25.

9 On 2 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the decision of the Opposition Division, claiming that the opposition should be rejected in its entirety.

10 By decision of 19 March 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First, the Board of Appeal found that the relevant public was the French public, whose level of attention was average, or even higher than average if the price of the goods was particularly high.

11 Secondly, the Board of Appeal upheld the Opposition Division’s findings concerning the comparison of the goods and services at issue. Thus, as regards the goods in Class 18 covered by the mark applied for, on the one hand, it found that ‘goods made of leather and imitations of leather, namely briefcases, beach bags, wallets, shopping bags, handbags, backpacks, satchels, casual bags; trunks and travelling bags’ were identical to the goods covered by the earlier mark, that ‘goods made of leather and imitations of leather, namely bags (game -) [hunting accessories], holdalls’ were highly similar to the goods covered by the earlier mark and that ‘bags [envelopes, pouches] of leather, for packaging’ were similar to the goods covered by the earlier mark. On the other hand, it found that the goods ‘leather and imitations of leather; animal skins, hides; umbrellas; parasols; walking sticks; whips; harnesses; saddlery’ differed from the goods and services covered by the earlier mark and rejected the intervener’s arguments in that regard. As regards the goods in Class 25 covered by the mark applied for, the Board of Appeal confirmed that ‘clothing, footwear, headgear’ were identical to the goods covered by the earlier mark.

12 Thirdly, as regards the comparison of the signs at issue, the Board of Appeal found that they were visually and phonetically similar to an average degree and that they were not conceptually similar. Therefore, taking into account the normal degree of distinctiveness of the earlier mark, the average or even high level of attention of the relevant public and the overall similarity of the signs at issue, the Board of Appeal concluded that the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, could not be excluded as regards the goods covered by the mark applied for which were found to be identical or similar to the goods covered by the earlier mark.

Forms of order sought

13 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

14 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

15 The intervener contends that the Court should:

- dismiss the action;

- uphold the contested decision;

- reject the application for registration as regards the goods in Classes 18 and 25, referred to in paragraph 8 above;

- order the applicant or EUIPO to pay the costs incurred by the intervener in the proceedings before EUIPO and before the Court.

Law

16 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.

17 Bearing in mind the date on which the application for registration in question was made, namely 28 October 2016, which is determinative for the purposes of identifying the applicable substantive law, the facts of present proceedings are governed, first, by the procedural provisions of Regulation 2017/1001 and, second, by the substantive provisions of Regulation No 207/2009, as amended (see, to that effect, judgments of 4 March 2020, Tulliallan Burlington v EUIPO, C-155/18 P to C-158/18 P, EU:C:2020:151, paragraph 4, and of 18 June 2020, Primart v EUIPO, C-702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

18 Consequently, in the present case, as regards the substantive provisions, the references made by the Board of Appeal in the contested decision to Article 8(1)(b) of Regulation 2017/1001, and by the parties in their pleadings, should be understood as referring to Article 8(1)(b) of Regulation No 207/2009, which is identical in content.

19 Similarly, the applicant’s reference to Article 60(1)(a) of Regulation 2017/1001 must be understood as referring to Article 53(1)(a) of Regulation No 207/2009, which is identical in content.

20 In that regard, it should be noted that, since the proceedings before the Board of Appeal are opposition proceedings, Article 53(1)(a) of Regulation No 207/2009, relating to relative grounds for invalidity, is not applicable in the present case.

21 It must therefore be held that, in support of the action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

22 The applicant submits, in essence, that, since the marks at issue are not similar, the Board of Appeal erred in concluding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

23 Under Article 8(1)(b) of Regulation No 207/2009, 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, the earlier trade mark and the identity or similarity of the goods or services covered...