ORDER OF THE GENERAL COURT (Eighth Chamber)
21 November 2018 (*)
(EU trade mark — Application for EU figurative mark HUSKY — Earlier EU word and figurative marks HUSKY — Relative ground for refusal — Action manifestly lacking any foundation in law)
In Case T‑82/18,
Husky CZ s.r.o., established in Prague (Czech Republic), represented by L. Lorenc, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
Husky of Tostock Ltd, established in Woodbridge (United Kingdom),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 18 January 2018 (Case R 812/2017-1), relating to opposition proceedings between Husky ofTostock and Husky CZ,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva and G. De Baere (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 13 February 2018,
having regard to the response lodged at the Court Registry on 27 April 2018,
makes the following
Order
Background to the dispute
1        On 14 June 2005, the applicant, Husky CZ s.r.o., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), itself 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, 20, 22, 25 and 28 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: ‘Briefcases, backpacks, travel luggage and sports bags’;
–        Class 20: ‘Sleeping bags for camping’;
–        Class 22: ‘Tents’;
–        Class 25: ‘Clothing, footwear, headgear’;
–        Class 28: ‘Sports articles’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 46/2005 of 14 November 2005.
5        On 14 February 2006, the opponent, Husky of Tostock Ltd, filed a notice of opposition to registration of the mark applied for in respect of the goods in Classes 18 and 25 referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        the EU word mark HUSKY, filed on 1 April 1996 and registered on 30 November 1998 under reference number 152546, in respect of goods in, inter alia, Classes 18 and 25;
–        the EU figurative mark, filed on 5 June 2003 and registered on 17 February 2005 under reference number 3213576, in respect of goods in, inter alia, Classes 18 and 25, reproduced below:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation 2017/1001) and in Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation 2017/1001).
8        On 22 May 2008, the opponent submitted ‘facts, evidence and arguments’ in support of its opposition, in which it compared the earlier word mark and the mark applied for and argued that there was a likelihood of confusion. It did not mention the earlier figurative mark.
9        On 23 July 2008, the applicant submitted its observations on the opposition. That document contained, first, a request for proof of genuine use of the earlier word mark and, secondly, arguments concerning the comparison of the earlier figurative mark and the mark applied for designed to establish that there was no likelihood of confusion because of their dissimilarity.
10      On 2 January 2009, the applicant filed its response to the ‘facts, evidence and arguments’ provided by the opponent. It stated that, given that the opponent had limited its notice of opposition and referred only to the earlier word mark, it would take only that earlier right into account and would ignore all of the opponent’s earlier arguments. It maintained its request for proof of genuine use of the earlier word mark.
11      On 8 July 2009, EUIPO suspended the opposition proceedings at the opponent’s request, on account of revocation proceedings brought by the applicant against the earlier word mark.
12      By decision of 16 February 2012, the Cancellation Division granted in part that application for revocation. By decision of 14 March 2013, the First Board of Appeal of EUIPO dismissed the appeal brought by the applicant against that decision. By judgment of 13 February 2015, Husky CZ v OHIM — Husky of Tostock (HUSKY) (T‑287/13, EU:T:2015:99), the General Court dismissed the applicant’s action against the decision of the First Board of Appeal.
13      On 9 March 2016, the opposition proceedings were resumed. The opponent submitted neither arguments nor proof of use of the earlier word mark.
14      By decision of 21 March 2017, the Opposition Division upheld the opposition based on the earlier figurative mark in respect of all of the contested goods.
15      The Opposition Division took the view that the notice of opposition indicated clearly that the opposition was based on EU word mark No 152546 and EU figurative mark No 3213576. It stated that it was apparent from the file that figurative mark No 3213576 was a valid earlier mark that had been relied upon as the basis of the opposition within the period prescribed by Article 41(1) of Regulation No 207/2009 (now Article 46(1) of Regulation 2017/1001). It noted that, even though, in its arguments, the opponent continually referred to word mark No 152546, it had not expressly limited the basis of its opposition to that earlier mark, as the applicant claimed.
16      The Opposition Division then examined the opposition in so far as it was based on the earlier figurative mark. It considered that the goods at issue were identical or very similar and that the marks at issue were phonetically identical, conceptually either identical or different and visually similar to an average degree. It concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
17      On 24 April 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the Opposition Division’s decision.
18      The applicant claimed that the Opposition Division had erred in basing its decision on the earlier figurative mark and not solely on the earlier word mark. According to the applicant, it followed from the opponent’s observations submitted on 22 May 2008 that it had based its opposition solely on the earlier word mark. It argued that the opponent had therefore limited the opposition in such a way that it was no longer based on the earlier figurative mark, but solely on the earlier word mark. It concluded that the Opposition Division had erred in not rejecting the opposition, given that the opponent had not provided proof of genuine use of the earlier word mark upon which the opposition was based.
19      In its observations lodged with EUIPO on 26 June 2017, the opponent stated that the notice of opposition was based on both the earlier word mark and the earlier figurative mark and that the Opposition Division had correctly held that it had not limited the basis of its opposition. It submitted that the Opposition Division had correctly concluded that there was a likelihood of confusion by taking account of the earlier figurative mark and that the applicant did not contest this.
20      By decision of 18 January 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.
21      The Board of Appeal stated that the applicant did not dispute the Opposition Division’s assessment of the likelihood of confusion and that the issue was therefore to determine whether the opponent had withdrawn the opposition in so far as it was based on the earlier figurative mark.
22      The Board of Appeal noted that, according to the case-law, the withdrawal, in whole or part, of an application for an EU trade mark must be made expressly and unconditionally and that, by analogy, the same applies to the withdrawal or partial withdrawal of the opposition. The opponent, during the proceedings before EUIPO, did not state expressly and in writing that it was no longer relying on the opposition in so far as it was based on the earlier figurative mark.
23      Furthermore, the Board of Appeal took the view that, by analogy with the case-law according to which the withdrawal of an application for an EU trade mark cannot be inferred by reason solely of the fact that the applicant for that mark took no action in the course of the opposition proceedings before EUIPO, the applicant could not infer the partial withdrawal of the opposition from the fact that the opponent had not responded to the applicant’s observations of 2 January 2009. Nor could the applicant infer the partial withdrawal of the opposition from the fact that the opponent had requested a suspension of the proceedings before EUIPO on account of the revocation proceedings brought against the earlier word mark.
24      The Board of Appeal held that the Opposition Division had not erred in finding that the opposition based on the earlier figurative mark had been maintained, since the opponent did not expressly restrict the basis of the opposition to the earlier word mark. Taking account of the earlier figurative mark, it also confirmed the Opposition Division’s finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
25      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
26      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
27      Under Article 126 of its Rules of Procedure, where it is clear that it has no jurisdiction to hear and determine an action or where the action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
28      In the present case, the Court, taking the view that it has sufficient information from the documents in the file, has decided to give a decision without taking further steps in the proceedings.
29      In support of its action, the applicant claims that ‘EUIPO made a number of errors of law and facts leading it to render an incorrect decision’, that ‘EUIPO did not properly take into consideration the arguments and evidence submitted by the applicant and, therefore, it incorrectly considered what earlier rights the opposition was based on’, and that, ‘as such, [EUIPO] infringed [Regulation 2017/1001] and the rules of law relating to its application’.
30      It must be stated, as EUIPO observes, that the applicant fails to identity in the application the legal provisions which the Board of Appeal is alleged to have infringed.
31      However, without it being necessary to rule on the admissibility of the action, the Court considers that the arguments put forward in the application, according to which the Board of Appeal should have held that the opponent had withdrawn its opposition in so far as it was based on the earlier figurative mark, must be rejected as manifestly lacking any foundation in law.
32      It must be stated that, in the notice of opposition, the opposition was based on the two earlier marks — the word mark and the figurative mark — cited in paragraph 6 above, a fact which the applicant acknowledges.
33      It must also be stated that the opponent did not, at any time during the proceedings before EUIPO, withdraw expressly and in writing its opposition in so far as it was based on the earlier figurative mark, and the applicant does not claim that that was the case.
34      The applicant claims that the observations lodged by the opponent on 22 May 2008 contain such an express and unconditional withdrawal, in so far as they refer only to the earlier word mark. It adds that the fact that the opponent requested EUIPO to suspend the opposition proceedings on account of pending revocation proceedings against the earlier word mark supports the claim that it intended to base the opposition on that mark alone.
35      It must be held that, by those arguments, the applicant submits that the opponent implicitly ceased to rely upon the earlier figurative mark in support of its opposition.
36      It must, however, be noted that those arguments had already been put forward before the Board of Appeal and that the latter had rejected them in relying, by analogy, on the case-law relating to the withdrawal of an application for an EU trade mark.
37      Thus, the Board of Appeal noted that, according to the case-law, the withdrawal of an application for an EU trade mark cannot be inferred by reason solely of the fact that the applicant for that mark took no action in the course of the opposition proceedings before EUIPO (judgment of 17 March 2009, Laytoncrest v OHIM — Erico (TRENTON), T‑171/06, EU:T:2009:70, paragraphs 42 to 46) and that the withdrawal, in whole or part, of an application for an EU trade mark or the power to restrict the list of goods or services contained therein must be made expressly and unconditionally (judgments of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 61, and of 10 November 2004, Storck v OHIM (Shape of a sweet), T‑396/02, EU:T:2004:329, paragraph 19).
38      The applicant merely argues that the judgments cited by the Board of Appeal concern different factual situations to that of the present case. However, suffice it to note that the applicant has not put forward any submission designed to challenge the argument that the legal solution adopted in those judgments and applied by the Board of Appeal, namely that the partial withdrawal of an opposition cannot be inferred by reason of the opponent’s conduct or silence, but may be made only expressly and in writing, is applicable by analogy in the present case.
39      In that regard, although it is true that the legislature has not made express provision for withdrawal of the opposition, since Article 43(1) of Regulation No 207/2009 (now Article 49(1) of Regulation 2017/1001) refers only to withdrawal of a trade mark application, the Court has held that, given that the scheme of that regulation places the applicant for a trade mark and the opponent on an equal footing in opposition proceedings, that equality must extend to the possibility of withdrawing procedural documents (see judgment of 1 February 2006, Dami v OHIM — Stilton Cheese Makers (GERONIMO STILTON), T‑466/04 and T‑467/04, EU:T:2006:40, paragraph 40 and the case-law cited).
40      Finally, the applicant cannot claim that the opponent ceased to base its opposition on the earlier figurative mark because it was unable to establish genuine use of that mark or that, if it had had the impression, in the proceedings before EUIPO, that that mark was going to be taken into account as the basis of the opposition, it would have also requested proof of genuine use for that mark.
41      As EUIPO pointed out, it suffices to note that the earlier figurative mark was registered for less than five years at the date of application for the mark applied for and it could not therefore be subject to a request for proof of genuine use pursuant to Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001).
42      Furthermore, it must be noted that the applicant’s incorrect assessment that the opponent, in the ‘facts, evidence and arguments’ submitted on 22 May 2008, ceased to base its opposition on the earlier figurative mark was never confirmed in the proceedings before EUIPO. On the contrary, both the Opposition Division and Board of Appeal and the opponent itself in its observations of 26 June 2017 stated that the opposition was based on both the earlier word mark and the earlier figurative mark.
43      It follows from all of the foregoing that the action must be dismissed as manifestly lacking any foundation in law.
Costs
44      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Husky CZ s.r.o. shall pay the costs.
Luxembourg, 21 November 2018.
E. Coulon
A.M. Collins
Registrar
President
*      Language of the case: English.