Court of Justice of the European Communities (including Court of First Instance Decisions)

ORDER OF THE GENERAL COURT (Sixth Chamber)

16 January 2019 (*)

(EU trade mark — Invalidity proceedings — EU figurative mark THYREOS VASSILIKI — Declaration of invalidity — Right to the name Vassiliki in Greece — Relative ground for invalidity regarding the infringement of the right to a name — Article 60(2)(a) of Regulation (EU) 2017/1001 — Action manifestly lacking any foundation in law)

In Case T‑160/18,

Vassiliki Theodorakidi, residing in Veroia (Greece), represented by F. Ikonomidou Ikonomou, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,

defendant,

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

Vassiliki Benopoulou, residing in Kifissia (Greece),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 December 2017 (Case R 40/2017-4), relating to invalidity proceedings between Ms Benopoulou and Ms Theodorakidi,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 2 March 2018,

having regard to the response lodged at the Court Registry on 22 May 2018,

makes the following

Order

 Background to the dispute

1        On 8 April 2009, the applicant, Ms Vassiliki Theodorakidi, 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 and services in respect of which registration was sought are in Classes 3, 6, 14, 16, 18, 19, 20, 21, 24, 25, 33, 35, 41, 43 and 44 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 3: ‘Bleaching preparations and other preparations for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

–        Class 6: ‘Common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal not included in other classes, ores’;

–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

–        Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes, printed matter; printed matter; bookbinding material; photographs; articles of stationery; adhesives for stationery or household purposes; artists’ materials; painters’ brushes; typewriters and office requisites (except furniture); instructional and teaching materials except apparatus; plastic materials for packaging (not included in other classes); printers’ type; printing blocks’;

–        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery’;

–        Class 19: ‘Building materials (non metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’;

–        Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whale bone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’;

–        Class 21: ‘Household or kitchen utensils and containers, combs and sponges; brushes (except paint brushes); materials for making brushes; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in buildings); glassware, porcelain and earthenware not included in other classes’;

–        Class 24: ‘Textiles and textile goods, not included in other classes; bed and table covers’;

–        Class 25: ‘Clothing, shoes, headgear’;

–        Class 33: ‘Alcoholic beverages (except beers)’;

–        Class 35: ‘Advertising; business management; business administration; office functions’;

–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’;

–        Class 43: ‘Services for providing food and drink; temporary accommodation services’;

–        Class 44: ‘Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture or forestry services’.

4        On 31 May 2010, the applicant obtained the registration of the trade mark sought, under No 8 206 963, which was published in the Community Trade Marks Bulletin No 2010/100 of 3 June 2010.

5        On 27 November 2014, the other party to the proceedings before EUIPO, Ms Vassiliki Benopoulou, filed an application for a declaration of invalidity in respect of all the goods and services covered by the contested mark.

6        The application for a declaration of invalidity was based, in particular, on the right to the name Vassiliki in Greece.

7        The grounds for the application for a declaration of invalidity included, inter alia, that laid down in Article 53(2)(a) of Regulation No 207/2009 (now Article 60(2)(a) of Regulation 2017/1001).

8        On 8 November 2016, the Cancellation Division of EUIPO granted the application for a declaration of invalidity in its entirety on the basis of Article 53(2)(a) of Regulation No 207/2009.

9        On 6 January 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation No 2017/1001), against the decision of the Cancellation Division.

10      By decision of 19 December 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

11      First, the Board of Appeal noted that when EUIPO applies the provisions of Article 60(2)(a) of Regulation 2017/1001, it is required to apply the national law. In that regard, the Board of Appeal pointed out that the right to a name was protected by Articles 57 to 59 of the Greek Civil Code and referred to the three Greek judgments (at first instance, on appeal and in cassation respectively) in the same case between the same parties as in the present proceedings (‘the Greek judgments’). The Board of Appeal deduced from the Greek judgments that the other party to the proceedings before EUIPO, a painter and sculptress well known to the art world and to the general public, including internationally, by her forename written in Latin characters, was entitled to claim protection for the name Vassiliki in accordance with the abovementioned provisions of the Greek Civil Code. The Board of Appeal took into account the fact that the Greek courts had reached the conclusion that the use of the contested mark, composed of that name together with the term ‘thyreos’ and a Byzantine coat of arms, entailed a likelihood of confusion in accordance with the Greek provisions on the right to a name, having regard to the fact that the parties are active in the same field. The Board of Appeal noted that, in the Greek judgments, the Greek courts had indeed prohibited the use of the contested mark by the applicant, on the ground that it infringed the right to a name of the other party to the proceedings before EUIPO and had ordered the applicant to desist in future from using the name Vassiliki written in Latin characters, either alone or accompanied by an emblem, in this case a coat of arms.

12      Secondly, given that neither the Greek legislation nor the Greek judgments limited the scope of the protection arising from the right to a name as regards the goods and services at issue, the Board of Appeal declared that the contested mark was invalid for all the goods and services covered by that mark, pursuant to Article 60(2)(a) of Regulation 2017/1001.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision and dismiss the application for a declaration of invalidity;

–        order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs, including those incurred before the Cancellation Division and Board of Appeal of EUIPO.

14      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

15      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly lacking any foundation in law, the General 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. In this instance, the Court considers that it has sufficient information available to it from the material in the file and has decided, pursuant to that article, to give a decision without taking further steps in the proceedings.

16      In support of her action, the applicant relies on four pleas in law, alleging, first, in essence, an infringement of Article 8(1)(b) of Regulation 2017/1001, secondly, an error in law by the Board of Appeal in that it found that the other party to the proceedings before EUIPO was widely known by her first name, thirdly, an infringement of the obligation to state reasons and, fourthly, an error of law by the Board of Appeal in failing to restrict the range of goods and services in respect of which the contested mark should be declared invalid.

17      The Court considers that it is necessary to examine, first, the first and fourth pleas in law together, and then the second and third pleas in law together.

 The first and fourth pleas in law alleging, in essence, an infringement of Article 8(1)(b) of Regulation 2017/1001

18      By her first plea in law, the applicant states, in essence, that, in finding that there is a likelihood of confusion between the marks at issue, the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001. She challenges in particular the finding that the marks at issue are similar, on the ground, in particular, that the addition of the term ‘thyreos’ and the Byzantine coat of arms in the contested mark would preclude any likelihood of confusion with other marks. She adds that she is perfectly entitled to use her first name as a trade name, because, essentially, in accordance with Article 4 of Regulation 2017/1001, an EU trade mark may consist of any signs capable of being represented graphically, including personal names, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

19      By her fourth plea in law, the applicant states that the Board of Appeal erred in law in that it did not restrict the range of goods and services in respect of which the contested mark should be declared invalid, whereas certain goods and services covered by that mark are neither similar nor identical to those covered by the earlier mark. Regulation 2017/1001 and the Greek Trade Marks Law require that the goods and services are similar or identical, unless the earlier mark enjoys a reputation, which is clearly not the case in this instance.

20      EUIPO disputes the applicant’s arguments and considers them irrelevant to the present case.

21      As is apparent from paragraphs 11 and 12 above, the Board of Appeal dismissed the appeal and upheld the declaration that the contested mark was invalid on the ground that its use could be prohibited pursuant to an earlier right, in this case the right to a name governed by Articles 57 to 59 of the Greek Civil Code, on the basis of Article 60(2)(a) of Regulation 2017/1001.

22      It must also be pointed out that in paragraph 20 of the contested decision, the Board of Appeal stated that Greek law does not contain any reference limiting the scope of protection stemming from the personality right to which the right to a name attaches, as regards the goods and services at issue. The Board of Appeal also stated that nor had the Greek judgments limited the cease and desist order in relation to the contested mark to any specific goods and services. Consequently, the Board of Appeal upheld the declaration that the contested mark was invalid in respect of all the goods and services covered by it.

23      The pleas in law raised by the applicant do not seek to call in question the grounds of the contested decision referred to in paragraphs 21 and 22 above. The applicant adduces only arguments relating essentially to Articles 4 and 8(1)(b), and even Article 8(5), of Regulation 2017/1001, and does not develop, by contrast, any argument intended to show that the Board of Appeal incorrectly dismissed the appeal on the basis of the right to a name, governed by the Greek Civil Code as interpreted by the Greek judgments. She fails to raise any specific argument against the Greek judgments — which were delivered in the context of the same dispute — on the basis of the right to a name, with those judgments having acquired the force of res judicata.

24      In those circumstances, the first and fourth pleas in law are ineffective and must be rejected as manifestly lacking any foundation in law.

 The second and third pleas in law alleging an error of law and an infringement of the obligation to state reasons, respectively

25      By her third plea in law, the applicant submits, in essence, that the Board of Appeal infringed its obligation to state reasons, under the first sentence of Article 94(1) of Regulation 2017/1001, in stating that the other party to the proceedings before EUIPO was widely known by her first name, without mentioning any evidence in that regard. The applicant also refers, in essence, to an infringement of Article 95(1) of Regulation 2017/1001, on the ground that the other party to the proceedings before EUIPO did not provide any evidence that she was widely known.

26      EUIPO disputes the applicant’s arguments.

27      It is clear that the third plea in law is based on a misreading of the contested decision. Contrary to the applicant’s claims, it is apparent from paragraph 7 of the contested decision that the other party to the proceedings before EUIPO duly referred, before the Board of Appeal, to exhibits 1 to 92, submitted at the time of her application for a declaration of invalidity, in support of the statement that she is widely known by her first name. In paragraph 19 of the contested decision, the Board of Appeal found that the fact that the other party to the proceedings before EUIPO was well known had been shown to the requisite legal standard in the Greek judgments, on the one hand, and by the submission of evidence, on the other. Consequently, the contested decision complies with Article 94(1), first sentence, and Article 95(1) of Regulation 2017/1001.

28      The third plea must, therefore, be rejected as manifestly unfounded.

29      By her second plea in law, the applicant submits, in essence, that the Board of Appeal erred in law in finding that the other party to the proceedings before EUIPO was widely known by her first name. In that regard, the applicant submits that the other party to the proceedings before EUIPO had produced false diplomas before the Greek courts in order to prove that she was widely known. The applicant states, in particular, that the other party to the proceedings before EUIPO was convicted of using forged documents in respect of those diplomas and in that regard appends Annexes 10 to 19 to the application.

30      EUIPO disputes the admissibility of Annexes 10 to 19 to the application, and contends that the applicant’s arguments are irrelevant.

31      It must be noted that the applicant’s arguments are directed only at the authenticity of the diploma or diplomas of the other party to the proceedings before EUIPO, which is a separate question from that of whether that party’s name was well known, in this case her first name written in Latin characters, within the meaning of Greek law. The Board of Appeal did not base its finding that the other party to the proceedings before EUIPO was an artist well known internationally to the art world and the general public, by her first name written in Latin characters, on the existence of diplomas. In addition, the applicant does not highlight a specific passage of the contested decision or of the Greek judgments that refers to such diplomas. The applicant does not, therefore, explain how, even if the diplomas of the other party to the proceedings before EUIPO were not in fact authentic, this would be such as to invalidate the finding that the latter’s first name, written in Latin characters, was famous.

32      Consequently, irrespective of whether the documents annexed to the application are admissible, the second plea in law is ineffective and must be rejected as manifestly lacking any foundation in law.

33      It follows from all the foregoing that the action must be dismissed in its entirety as manifestly lacking any foundation in law.

 Costs

34      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, she must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby orders:

1.      The action is dismissed.

2.      Ms Vassiliki Theodorakidi shall bear her own costs and pay those of the European Union Intellectual Property Office (EUIPO).

Luxembourg, 16 January 2019.

*      Language of the case: English.

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