Judgments nº T-693/19 of Tribunal General de la Unión Europea, March 10, 2021

• Resolution Date: March 10, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-693/19

(EU trade mark - Opposition proceedings - Application for EU word mark KERRYMAID - Earlier EU figurative mark Kerrygold - Relative ground for refusal - Geographical name - Dominant element - Peaceful coexistence - Article 8(1)(b) of Regulation (EC) No 207/2009 - Application of the law ratione temporis)

In Case T-693/19,

Kerry Luxembourg Sàrl, established in Luxembourg (Luxembourg), represented by F. Traub, lawyer, and I. Connor, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and S. Hanne, acting as Agents,

defendant,

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

Ornua Co-operative Ltd, established in Dublin (Ireland), represented by E. Armijo Chávarri and A. Sanz Cerralbo, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 23 July 2019 (Case R 2473/2013-5), relating to opposition proceedings between Kerry Luxembourg and Ornua,

THE GENERAL COURT (Ninth Chamber),

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

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 9 October 2019,

having regard to the response of EUIPO lodged at the Court Registry on 18 December 2019,

having regard to the response of the intervener lodged at the Court Registry on 8 January 2020,

further to the hearing on 18 November 2020,

gives the following

Judgment

Background to the dispute

1 On 28 June 2011, the applicant, Kerry Luxembourg Sàrl, formerly Kerry Group Services International Limited, 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 word sign KERRYMAID.

3 The goods in respect of which registration was sought are in Classes 29 and 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:

- Class 29: ‘Cheese; Cheese products; Dairy products; Dairy spreads; Cheese spreads; Edible oils and fats; Snack foods and prepared meals; Meat, fish, poultry and game; Preserved, dried and cooked fruits and vegetables; Vegetable and oil based spreads; Lard; Margarine; Butter; Vegetable lard; Yoghurts; Custard style yoghurts; Dairy products containing or flavoured with custard, Imitation cheese; Cheese substitutes; Imitation cream; Cream substitutes’;

- Class 30: ‘Snack foods and prepared meals; Sandwiches; Crackers filled with cheese; Cereal; Snack foods flavoured with cheese; Frozen desserts; Custard; Imitation custard; Custard mixes; Custard powder; Cheesecakes; Dessert sauces; Confectionery’.

4 The EU trade mark application was published in the Community Trade Marks Bulletin of 23 August 2011.

5 On 23 November 2011, the intervener, Ornua Co-operative Ltd, formerly The Irish Dairy Board Co-operative Ltd, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on 18 earlier marks composed exclusively or in part of the word ‘kerrygold’ and registered for goods in Classes 1, 5, 29, 30, 32 and 33.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), Article 8(4) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b), Article 8(4) and Article 8(5) of Regulation 2017/1001). The opposition was also based on the claim that the mark KERRYGOLD was a well-known mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.

8 By decision of 22 October 2013, the Opposition Division upheld the opposition in respect of all the goods covered by the mark applied for and rejected the application for registration in its entirety on the basis of Article 8(5) of Regulation No 207/2009. The opposition was upheld on the basis of the following EU figurative mark (‘the earlier mark’):

9 That mark was registered on 1 March 2011 under No 9 379 652 in respect of goods in Class 29 corresponding to the following description: ‘Dairy produce (for food); milk, skimmed milk, butter milk, sour milk, edible cream, all especially in liquid, condensed, frozen or powder form; milk products (for food); UHT milk; milk drinks, mainly of milk or of skimmed milk; butter, cheese, yoghurt, whey for food (not as a beverage), sour milk products, butter preparations, cheese preparations, curds (quark); edible oils and fats, including butter oils, milk fat, milk semi-fats; milk products as semi-manufactured products for the foodstuffs industry; food products made substantially from milk, milk products, edible oils or edible fats with or without water; dried (preserved) milk, as a foodstuff; casein and caseinates for food; desserts based on milk, cream, yogurt; edible spreads; bread spreads, mainly of a mixture of one or more dairy products, especially butter, cream, milk, skimmed milk or butter milk, with water, optionally with milk proteins; bread spreads mainly of cheese, with milk and/or skimmed milk, optionally with flavourings’.

10 On 9 December 2013, the applicant filed a notice of appeal against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).

11 On 29 January 2014, the intervener brought an infringement action before the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante, Spain) on the basis of Article 9(1)(b) and (c) of Regulation No 207/2009 (now Article 9(2)(b) and (c) of Regulation 2017/1001) against the applicant, concerning the sale of goods bearing the sign KERRYMAID on the Spanish market.

12 In the light of that action, the proceedings before the Board of Appeal were suspended.

13 By decision of 18 March 2015, the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante) dismissed the infringement action on the grounds that the only similarity between the marks at issue lay in the common element ‘kerry’, which refers to the Irish county known for cattle breeding, and that it had been established that the marks coexisted peacefully in Ireland and the United Kingdom.

14 On 30 April 2015, the intervener brought an appeal against that decision before the Audiencia Provincial de Alicante (Provincial Court, Alicante, Spain), which decided to stay the proceedings and to refer questions to the Court of Justice for a preliminary ruling.

15 By judgment of 20 July 2017, Ornua (C-93/16, EU:C:2017:571), the Court of Justice held as follows:

- Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion between that EU trade mark and that sign;

- Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the elements which, according to the European Union trade marks court hearing an infringement action, are relevant for assessing whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in part of the European Union not covered by that action, may be taken into account by that court to assess whether that proprietor is entitled to prohibit the use of that sign in the part of the European Union which is the subject of the infringement action, provided that the market conditions and the sociocultural circumstances are not significantly different in one of those parts of the European Union and in the other;

- Article 9(1)(c) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark with a reputation and a sign peacefully coexist, does not allow the conclusion that in another part of the European Union, where that peaceful coexistence is absent, there is due cause legitimising the use of that sign.

16 By judgment of 6 February 2018, the Audiencia Provincial de Alicante (Provincial Court, Alicante) dismissed the intervener’s appeal and upheld the decision of the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante).

17 By decision of 23 July 2019 (‘the contested decision’), the Fifth Board of Appeal partially annulled the decision of the Opposition Division and upheld the opposition based in particular on Article 8(1)(b) of Regulation 2017/1001 for all the goods covered by the mark applied for, with the exception of ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’ in Class 29.

18 In the first place, as regards the ground of opposition based on Article 8(1)(b) of Regulation 2017/1001, as a preliminary point, the Board of Appeal held that the evidence produced by the intervener showed genuine use of the earlier mark for ‘dairy products, butter, cheese, dairy/butter and oil spreads’. Moreover, the Board of Appeal stated that, since the earlier mark was not subject to the proof of use requirement and had been registered for a more ample list of goods, which included the goods in respect of which genuine use had been established, the appeal would be assessed on the basis of that mark.

19 Next, first, the Board of Appeal found, in the light of the nature of the goods at issue, that the relevant public was the general public, whose level of attention...