Judgments nº T-117/20 of Tribunal General de la Unión Europea, February 10, 2021

• Resolution Date: February 10, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-117/20

(EU trade mark - Opposition proceedings - Application for the EU figurative mark PANTHÉ - Earlier national word and figurative marks PANTHER and earlier EU figurative mark P PANTHER - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Proof of genuine use of the earlier mark)

In Case T-117/20,

El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

defendant,

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

MKR Design Srl, established in Milan (Italy), represented by G. Dragotti, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 5 December 2019 (Case R 378/2019-5), relating to opposition proceedings between El Corte Inglés and MKR Design,

THE GENERAL COURT (Tenth Chamber),

composed of A. Kornezov, President, E. Buttigieg (Rapporteur) and K. Kowalik-Bańczyk, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 21 February 2020,

having regard to the response of EUIPO lodged at the Court Registry on 2 July 2020,

having regard to the response of the intervener lodged at the Court Registry on 9 July 2020,

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 14 February 2017, the intervener, MKR Design Srl, 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, inter alia, Class 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 to the following description: ‘Clothing; Headgear’.

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2017/067 of 6 April 2017.

5 On 15 June 2017, the applicant, El Corte Inglés, SA, 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.

6 That opposition was based on the following earlier marks:

- the Spanish word mark PANTHER, which was registered on 21 February 1956 under the number 300031 in respect of the goods ‘tights, socks, leggings’ in Class 25 and has now been renewed until 23 December 2025;

- the Spanish figurative mark which was registered on 5 October 1978 under the number 828854 in respect of the goods ‘stockings, socks, shirts, knitted clothing and clothing in general for men, women and children’ in Class 25 and is reproduced below:

- the EU figurative mark which was registered on 20 August 2013 under the number 4762647 in respect of, inter alia, the goods ‘knitwear and polo shirts’ in Class 25 and is reproduced below:

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 letter dated 15 January 2018, the intervener asked EUIPO to request that the applicant furnish proof of use of the earlier Spanish word and figurative marks, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001). On 5 February 2018, EUIPO requested that the applicant furnish that proof. On 10 April 2018, the applicant complied with that request.

9 By decision of 20 December 2018, the Opposition Division of EUIPO rejected the opposition in its entirety, finding, in the first place, that there was no likelihood of confusion between the earlier figurative marks and the mark applied for and, in the second place, that genuine use of the earlier Spanish word mark in connection with the goods on which the opposition was based had not been sufficiently proved.

10 On 13 February 2019, 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.

11 By decision of 5 December 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, as regards the two earlier figurative marks, the Board of Appeal confirmed the Opposition Division’s assessment by finding, in essence, that, on account of the visual and conceptual differences between the signs at issue, there was no likelihood of confusion, without it being necessary to assess the evidence of genuine use of the earlier Spanish figurative mark. In the second place, as regards the earlier Spanish word mark PANTHER, the Board of Appeal found that the evidence which the applicant had submitted in order to prove genuine use of that mark in connection with the goods ‘tights, socks, leggings’ in Class 25, on which the opposition was based, was insufficient.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision in so far as it allowed the application for registration of the mark applied for in respect of the goods in Class 25 at issue;

- order EUIPO and the intervener to pay the costs.

13 EUIPO and the intervener contend that the Court should:

- dismiss the action in its entirety;

- order the applicant to pay the costs.

Law

14 It must be stated at the outset that, given the date on which the application for registration at issue was filed, namely 14 February 2017, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C-702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C-610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.

15 Consequently, in the present case, so far as concerns the substantive rules, the references to Article 8(1)(b) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by EUIPO and the intervener in their respective responses must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

16 In support of its action, the applicant puts forward, in essence, two pleas in law, the first of which alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and the second of which alleges infringement of Article 42(2) and (3) of Regulation No 207/2009.

The first plea, alleging infringement of Article 8 (1)(b) of Regulation No 2 07/2009

17 By the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant submits that, in the light of the overall similarity of the signs at issue and the identity or high degree of similarity of the goods at issue, the Board of Appeal erred in finding that there was no likelihood of confusion between the two earlier figurative marks referred to in the second and third indents of paragraph 6 above and the mark applied for.

18 EUIPO and the intervener dispute that line of argument.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, that 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.

20 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 the same 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 22 September 2016, Sun Cali v EUIPO - Abercrombie & Fitch Europe (SUN CALI), T-512/15, EU:T:2016:527, paragraph 44 and the case-law cited).

21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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...