Alexander Gugler v European Union Intellectual Property Office (T-238/17)

Contents

Judgment of the General Court (Eighth Chamber)25 September 2018^note(EU trade mark — Invalidity proceedings — EU figurative mark GUGLER — Earlier national company name Gugler France — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) — Likelihood of confusion)In Case T‑238/17,Alexander Gugler, residing in Maxdorf (Germany), represented by M.-C. Simon, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented initially by P. Sipos and subsequently by A. Folliard-Monguiral, acting as Agents,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingGugler France, established in Besançon (France), represented by A. Grolée, lawyer,THE GENERAL COURT (Eighth Chamber),composed of A.M. Collins, President, M. Kancheva and G. De Baere (Rapporteur), Judges,Registrar: M. Marescaux, Administrator,having regard to the application lodged at the Court Registry on 25 April 2017,having regard to the response of EUIPO lodged at the Court Registry on 30 June 2017,having regard to the response of the intervener lodged at the Court Registry on 12 June 2017,having regard to the written questions put by the Court to the parties and their answers to those questions, lodged at the Court Registry on 13 and 20 February 2018,further to the hearing on 15 March 2018,gives the following

Judgment

Background to the dispute

1On 31 August 2005, Gugler GmbH, the predecessor in title of the applicant, Mr Alexander Gugler, obtained from the European Union Intellectual Property Office (EUIPO) registration, under No 3324902, of the following EU figurative mark (‘the contested mark’):

2Application for that registration had been filed on 25 August 2003.

3The goods and services in respect of which the contested mark was registered are in Classes 6, 17, 19, 22, 37, 39 and 42 within the meaning 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 6: ‘Light-protection devices, namely awnings, folding shutters, roller blinds of metal’;– Class 17: ‘Sound-proofing materials, namely rockwool and foam plastic elements’;– Class 19: ‘Windows, roofing, doors, gates, shutters, roller blind boxes of glass and plastic; glazings, namely conservatories, conservatory roofs; light protection devices, namely folding shutters and roller blinds of plastic’;– Class 22: ‘Light protection devices, namely awnings of plastic’;– Class 37: ‘Window construction services, namely fitting of doors, gates and windows’;– Class 39: ‘Transportation’;– Class 42: ‘Window construction services, namely planning of doors, gates and windows’.

4On 15 December 2009, EUIPO registered the licence for the use of the contested mark granted by the applicant to Gugler GmbH.

5On 17 November 2010, the intervener, Gugler France, submitted an application for a declaration of invalidity of the contested mark in respect of all the goods and services covered by it. That application was based, first, on the contention that the proprietor of the contested mark acted in bad faith when it filed the application for the trade mark, within the meaning of Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 59(1)(b) of 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)) and, second, on the intervener’s company name, which, under French law, allowed it to prohibit use of the contested mark within the meaning of Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of that regulation (now Article 8(4) of Regulation 2017/1001).

6The intervener was incorporated in January 2002 and was registered on 7 February 2002 in the commercial and companies register of Besançon (France) under the company name Gugler France. According to that register, and to Article 2 of its articles of association, the intervener’s objects are ‘purchasing, trade in, selling and fitting building-closing devices, by any and all means or processes’.

7By decision of 21 December 2011, the Cancellation Division of EUIPO upheld the application for a declaration of invalidity in respect of all the goods and services covered by the contested mark, on the basis of Article 53(1)(c) of Regulation No 207/2009.

8On 16 February 2012, the applicant lodged an appeal against the Cancellation Division’s decision.

9On 26 August 2013, upon application by the applicant, the contested mark was the subject of a partial renewal, limited to the goods and services in Classes 19, 37 and 42 cited in paragraph 3 above. The partial renewal was published in Community Trade Marks Bulletin No 167/2013 of 4 September 2013.

10By decision of 16 October 2013, in Case R 356/2012-4, the Fourth Board of Appeal of EUIPO annulled the decision of the Cancellation Division and dismissed the application for a declaration of invalidity.

11On 18 December 2013, the intervener brought an action before the General Court against the decision of the Fourth Board of Appeal of EUIPO.

12By judgment of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER) (T‑674/13, not published, EU:T:2016:44), the Court annulled that decision. It found that the Board of Appeal had infringed the obligation to state reasons laid down in Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001), first, when it ruled on the ground for invalidity based on Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation, and, second, when it ruled on the ground for invalidity based on Article 52(1)(b) of Regulation No 207/2009.

13By decision of 6 June 2016, the Presidium of the Boards of Appeal of EUIPO referred the case to the First Board of Appeal, under reference R 1008/2016-1, for a new decision, in accordance with Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001).

14By decision of 31 January 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal against the decision of the Cancellation Division and found that the application for a declaration of invalidity of the contested mark should be upheld on the basis of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) of that regulation.

15The Board of Appeal observed that the earlier sign on which the application for a declaration of invalidity was based was the company name of the intervener, Gugler France. First of all, the Board of Appeal found that the conditions laid down in Article 8(4) of Regulation No 207/2009 were satisfied. First, it took the view that the earlier sign had been used in the course of trade with more than merely local significance. In that regard, it found that the evidence adduced by the intervener, in particular copies of its annual report for 2002 and 2003 and invoices, were sufficient to prove that it carried out, under its company name, activities connected with those for which it had been incorporated, prior to the date of application for the contested mark and with more than merely local significance. Second, the Board of Appeal stated that the intervener had acquired rights to the sign on the day on which it was registered in the register of trade and companies, which is the relevant date under Article L. 210-6 of the code de commerce (French Code of Commerce), namely on 7 February 2002, that is to say, prior to the date on which the application for the contested mark was filed. Third, the Board of Appeal noted that, under Article L. 711-4 of the code de la propriété intellectuelle (French Intellectual Property Code), on which the application for a declaration of invalidity was based, the intervener’s company name entitled it to prohibit use of a more recent trade mark if there was a likelihood of confusion on the part of the public.

16Next, the Board of Appeal considered that the relevant public was composed of French end consumers and professional consumers demonstrating a high degree of attention. It took the view, first, that the goods and services covered by the contested mark and the activities protected by the earlier sign were identical or similar and, second, that the contested mark and the earlier sign had a high degree of similarity. The Board of Appeal found that there was a likelihood of confusion and inferred that the conditions set out in French law for prohibiting the use of the contested mark were satisfied.

17Lastly, the Board of Appeal considered that the condition for the application of limitation in consequence of acquiescence laid down in Article 54(2) of Regulation No 207/2009 (now Article 61(2) of Regulation 2017/1001), namely that the intervener should have been aware that the contested mark had been used in France for five years and had acquiesced in that use, was not satisfied.

Forms of order sought

18The applicant claims that the Court should:– annul the contested decision;– order EUIPO to pay the costs.

19EUIPO and the intervener contend that the Court should:– dismiss the application;– order the applicant to pay the costs.

Law

20In support of its application, the applicant puts forward three pleas in law. The first plea alleges infringement of the principle of sound administration. The second plea alleges infringement of Article 8(4) of Regulation No 207/2009. It is divided essentially into two parts, the first alleging incorrect assessment by the Board of Appeal of the conditions for the application of Article 8(4) of Regulation No 207/2009, and the second alleging incorrect assessment of the likelihood of confusion. The third plea alleges infringement of Article 54(2) of that regulation.

21In the interests of procedural economy and having regard to the specific circumstances of the case, the Court will examine the second part of the second plea, alleging incorrect assessment of the likelihood of confusion.

22It should be noted as a preliminary point that, according to Article 53(1)(c) of Regulation No 207/2009, an EU trade mark is to be declared invalid, on application to EUIPO, where there is an earlier right as referred to in Article 8(4) of that regulation and the conditions set out in that paragraph are fulfilled. Under Article 8(4) of Regulation No 207/2009, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than merely local significance, the trade mark applied for may not be registered where and to the extent that, pursuant to the law of the Member State governing that sign, rights to that sign were acquired prior to the date of application for registration of the EU trade mark and where that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

23The first two conditions, namely those concerning the use and significance of the sign relied on, which must be more than merely local, arise from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgment of 24 March 2009, Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 33).

24By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to ... the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the preceding conditions, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law governing the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (judgments of 24 March 2009, GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 34, and of 18 September 2015, Federación Nacional de Cafeteros de Colombia v OHIM — Accelerate (COLOMBIANO COFFEE HOUSE), T‑359/14, not published, EU:T:2015:651, paragraph 24).

25In the present case, the Board of Appeal found that the intervener had relied on Article L. 711-4 of the code de la propriété intellectuelle (French Intellectual Property Code), supplemented by evidence on how that legislation was applied. It stated that the intervener had submitted a copy of a judgment of 24 November 1999 of the Cour d’appel de Paris (Court of Appeal, Paris,(France) relating to a conflict between, on the one hand, a French company name and, on the other hand, a later company name and later trade marks. In that judgment, the Cour d’appel de Paris (Court of Appeal, Paris) had ruled that usurpation or infringement of the company name by means of reproduction or imitation constituted an act of unfair competition if it were demonstrated that there was a likelihood of confusion and that the protection under Article L 711-4 of the code de la propriété intellectuelle (French Intellectual Property Code) required there to be a likelihood of confusion. The Board of Appeal found that it was clear from that provision and from the manner in which it was applied that the condition for the intervener to prohibit use of the contested mark on the basis of its company name was that there should be a likelihood of confusion.

26The Board of Appeal found that the concept of likelihood of confusion in French law was no different from that under EU law, in so far as it assumed the existence of a similarity between, on the one hand, the goods and services covered by the contested mark and the activities protected by the earlier sign and, on the other hand, the signs at issue. It could thus correctly draw an analogy with the criteria for the application of Article 8(1) of Regulation No 207/2009 (now Article 8(1) of Regulation 2017/1001).

27Article 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 cannot 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 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.

28According 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 that same line of 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 of 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).

29The applicant submits that, until October 2009, he acted in a close business relationship with the intervener and that the goods marketed by the intervener came from the undertaking which owned the contested mark, and then from the undertaking licensed to use that trade mark, that is to say, in both cases, Gugler GmbH. The intervener, it is submitted, promoted the windows which it sold as being manufactured in Maxdorf (Germany), the town in which Gugler GmbH has its seat. The applicant concludes that during the period in which the intervener marketed Gugler GmbH’s goods in France, it indicated their German origin. According to the applicant, the relevant public could therefore not have been misled as to their origin and there was no likelihood of confusion.

30Finally, the applicant observes that, following the breakdown of the business relationship between Gugler GmbH and the intervener in 2010, there was still no likelihood of confusion, since the intervener had changed its business name, obtained supplies from another German window manufacturer and no longer marketed the goods under the trade mark GUGLER.

31It should be recalled that the date to be taken into account for assessing the likelihood of confusion is the date on which the application for registration of the contested mark was filed, that is to say, 25 August 2003.

32The applicant’s argument that there was no likelihood of confusion following the breakdown of the business relationship between Gugler GmbH and the intervener in 2010 must therefore be rejected as ineffective.

33However, it is necessary to examine whether the existence, at the time of filing the application for registration of the contested mark, of economic ties between the proprietor of the contested mark and the cancellation applicant precludes the finding that there was a likelihood of confusion.

34The Board of Appeal found that, even assuming that the relevant public has a high degree of attention, the fact that the signs at issue were identical as regards their distinctive component offset the low degree of similarity between some of the goods and services covered by the contested mark and the activities protected by the earlier sign. The Board of Appeal took the view that consumers who had been exposed to the company name in the field of building-closing devices reasonably believed that identical or similar closing devices, as well as related insulation goods, marketed in France under the trade mark GUGLER, had the same business origin and therefore concluded that there was a likelihood of confusion.

35In the contested decision, the Board of Appeal rejected the applicant’s argument that the intervener and Gugler GmbH formed part of a distribution network. It found that there was no evidence that the distribution agreement was known to the public and that the fact that goods manufactured in Germany were sold in France under the trade mark GUGLER gave no right to Gugler GmbH over that mark in France, in so far as, under French law, use of a mark did not generate exclusive rights over it.

36It should be recalled that, on 25 August 2003, the date on which the application for registration of the contested mark was filed, business relations existed between the intervener and Gugler GmbH, at that time the proprietor of the contested mark. The intervener was the distributor of Gugler GmbH’s goods in France. Their business relationship dated back to 2000, when the intervener was called PK Fermetures. Since July 2002, Gugler GmbH held 498 shares in the intervener’s capital.

37In addition, in 2003, Gugler GmbH formed, with French partners, some of which were founders of the intervener, the company Gugler Europe, which has been the proprietor of the French figurative mark GUGLER since 28 August 2003. Gugler Europe granted a licence for that mark to the intervener.

38The question arises in the present case as to whether the existence, at the date on which the application for registration of the contested mark was filed, of an economic link between the proprietor of the contested mark and the cancellation applicant precludes the finding of a likelihood of confusion, which is defined as ‘the likelihood that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings’.

39In that respect, it should be noted that the finding of a likelihood of confusion is intended to protect the trade mark’s function of indicating origin, by making it possible to oppose the registration of a trade mark or to seek a declaration of invalidity thereof, if there is a risk that consumers may be misled as to the origin of the goods or services in question, on the false assumption that the goods and services covered by the signs at issue come from the same undertaking or from economically-linked undertakings.

40The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling that person, without any possibility of confusion, to distinguish those goods or services from others which have a different origin. In order for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all goods or services bearing that trade mark have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see judgments of 12 November 2002, Arsenal Football Club, C‑206/01, EU:C:2002:651, paragraph 48 and the case-law cited, and of 8 June 2017, W.F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 41 and the case-law cited).

41In order for that guarantee of origin, which constitutes the essential function of a trade mark, to be ensured, the trade-mark proprietor must be protected against competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling goods illegally bearing it (judgment of 12 November 2002, Arsenal Football Club, C‑206/01, EU:C:2002:651, paragraph 50).

42In the present case, the finding that there is a likelihood of confusion as to the origin of the goods and services covered by the contested mark presupposes that the relevant public might erroneously believe that the goods and services covered by that mark and the activities protected by the earlier sign come from economically-linked undertakings.

43Specifically, in the present case, however, the goods covered by the contested mark are manufactured by Gugler GmbH and the proprietor of the earlier company name is the distributor of those goods. Therefore, this is a case in which the fact that the consumer might believe that the goods and services in question come from economically-linked undertakings does not constitute an error as to their origin.

44It is also necessary to consider whether, as stated by the Board of Appeal, in order to exclude the likelihood of confusion, the consumer must be aware of the economic link between the proprietor of the earlier sign and the proprietor of the contested mark.

45As EUIPO points out, the French public was probably unaware of the existence of Gugler GmbH and of the fact that that undertaking manufactured the goods sold by the intervener, since the latter did not explicitly present itself as the distributor of Gugler GmbH. EUIPO states that the mere fact that the intervener presented its goods as being manufactured in Maxdorf in Germany is not sufficient for the French public to be aware that that was the place where Gugler GmbH had its seat.

46The assessment of the likelihood of confusion is an objective one. In particular, it is not necessary that the consumer should be aware that he is mistaken in believing that the goods and services in question come from the same undertaking or from economically-linked undertakings. Similarly, he cannot be required to know that he will not err as to the origin of the goods because he is aware of the existence of an economic link between the proprietors of the conflicting signs.

47As is apparent from settled case-law, the precise commercial origin that the relevant public will attribute to the goods or services covered by each of the two marks at issue is of little importance so far as a likelihood of confusion between them is concerned. What is important is whether that commercial origin could be perceived by the relevant public as being the same in both cases (judgment of 9 June 2010, Muñoz Arraiza v OHIM — Consejo Regulador de la Denominación de Origen Calificada Rioja (RIOJAVINA), T‑138/09, EU:T:2010:226, paragraph 26).

48It must therefore be held, in contrast to what was stated by the Board of Appeal, that it is not necessary, in order to exclude the likelihood of confusion where the proprietors of the conflicting signs are economically linked, that the consumer must be aware of that economic link.

49It follows that the economic link between the intervener — the proprietor of the earlier company name — and Gugler GmbH — the proprietor of the contested mark on the date on which the application for registration was filed — precluded a finding of a likelihood of confusion.

50The Board of Appeal thus erred in concluding that there was a likelihood of confusion, and the second part of the second plea must therefore be upheld.

51Accordingly, without there being any need to examine, in the context of the first part of the second plea, whether the Board of Appeal misapplied the conditions for the application of Article 8(4) of Regulation No 207/2009, the contested decision must be annulled. Consequently, it is also no longer necessary to rule on the first and third pleas, or on EUIPO’s arguments relating to the admissibility of certain annexes to the application.

Costs

52Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

53Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter.

54Since the intervener has been unsuccessful, it must bear its own costs.

Operative part

On those grounds,THE GENERAL COURT (Eighth Chamber)hereby:

1.Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 January 2017 (Case R 1008/2016-1);

2.Orders EUIPO to bear its own costs and to pay those incurred by Mr Alexander Gugler;

3.Orders Gugler France to bear its own costs.

Delivered in open court in Luxembourg on 25 September 2018.