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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Alberts v EUIPO - Techtex (Boîtes en carton [emballages]) (Community design - Judgment) [2025] EUECJ T-245/24 (12 February 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T24524.html Cite as: EU:T:2025:145, ECLI:EU:T:2025:145, [2025] EUECJ T-245/24 |
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JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
12 February 2025 (*)
( Community design - Invalidity proceedings - Registered Community design representing a cardboard box (packaging) - Earlier national word marks - Ground for invalidity - Use in the subsequent design of a distinctive sign the holder of which has the right to prohibit such use - Article 25(1)(e) of Regulation (EC) No 6/2002 - Article 27(2) of Delegated Regulation (EU) 2018/625 - No similarity between the goods )
In Case T‑245/24,
Adina Alberts, residing in Bucharest (Romania), represented by V. Roș and A. Livădariu, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by C. Bovar and E. Nicolás Gómez, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Techtex SRL, established in Cicârlău (Romania), represented by B. Bularda, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and U. Öberg, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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
1 By her action under Article 263 TFEU, the applicant, Ms Adina Alberts, seeks the annulment and alteration of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 March 2024 (Case R 1348/2023-3) (‘the contested decision’).
Background to the dispute
2 On 15 December 2021, the applicant filed with EUIPO an application for a declaration of invalidity of the Community design registered following an application filed by the intervener, Techtex SRL, on 5 May 2020 and represented in the following views:
3 The product in which the design, in respect of which a declaration of invalidity was sought, is intended to be incorporated was in Class 09.03 of the Locarno Agreement of 8 October 1968 Establishing an International Classification for Industrial Designs, as amended, and corresponded to the following description: ‘Cardboard boxes [packaging]’.
4 One of the grounds relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(e) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
5 The application for a declaration of invalidity was based, inter alia, on the use in the contested design of the word element ‘dr. albert’, which is similar to five Romanian word marks and three trade names used by the applicant.
6 On 28 April 2023, the Cancellation Division rejected the application for a declaration of invalidity. It found, inter alia, first, that three of the applicant’s five Romanian marks were not filed before the application for registration of the contested design. Secondly, as regards the earlier Romanian word marks ADINA ALBERTS, registered on 18 January 2011 under No 115271 for ‘medical services’ in Class 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 (‘earlier mark No 1’), and DR. ALBERTS, registered on 12 July 2019 under No 165053 for ‘cosmetic preparations and non-medicated toilet articles; non-medicated toothpaste; perfumes, essential oils; bleaching preparations and other washing substances; cleaning, polishing, scouring and abrasive preparations’ in Class 3 and ‘clothing, footwear and headgear’ in Class 25 (‘earlier mark No 2’), it ruled out the existence of a likelihood of confusion on the ground that there was no degree of similarity between the goods and services covered by those marks and ‘sanitary masks’, which are the goods concerned by the contested design. Thirdly, the Cancellation Division found that the applicant’s trade names did not constitute earlier rights within the meaning of Article 25(1)(e) of Regulation No 6/2002, since the applicant had not submitted any evidence of national law demonstrating a link between personal names and trade names.
7 On 27 June 2023, the applicant lodged an appeal with EUIPO against the Cancellation Division’s decision.
8 By the contested decision, the Board of Appeal upheld the appeal. First, it upheld the findings of the Cancellation Division concerning, inter alia, the applicant’s trade names, her three Romanian marks which had not been filed before the application for registration of the contested design and the lack of similarity between the goods covered by earlier mark No 2 and ‘sanitary masks’. Secondly, unlike the Cancellation Division, it found that there was a low degree of similarity between the services covered by earlier mark No 1 and ‘sanitary masks’. Consequently, the Board of Appeal referred the case back to the Cancellation Division to assess, inter alia, proof of use of earlier Romanian mark No 1 and whether that mark complied with the other conditions for the application of Article 25(1)(e) of Regulation No 6/2002.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– primarily, uphold the application for a declaration of invalidity of the contested design;
– in the alternative, refer the case back to the Board of Appeal for reconsideration;
– order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
10 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred in the event that an oral hearing is convened.
11 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 In support of her action, the applicant relies on two pleas in law, alleging, first, infringement of essential procedural requirements and of rules of law relating to the limits of the Board of Appeal’s powers in assessing the pleas in law and, secondly, infringement of Article 25(1)(e) of Regulation No 6/2002.
The first plea, alleging infringement of essential procedural requirements and of rules of law relating to the limits of the Board of Appeal’s powers in assessing the pleas in law
13 By her first plea, the applicant submits that the Board of Appeal infringed Article 63 of Regulation No 6/2002, Article 27 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the principle of the prohibition of reformatio in pejus and the principle of res judicata, by assessing issues that were not present in the action, namely, first, the ground for invalidity based on trade names and, secondly, proof of use of earlier mark No 1. That plea is divided, in essence, into two parts, which it is appropriate to examine separately.
The first part, alleging infringement of Article 63 of Regulation No 6/2002 and Article 27 of Delegated Regulation 2018/625 as regards the ground for invalidity based on trade names
14 The applicant submits that her written statement setting out the grounds of her appeal before the Board of Appeal was limited, as regards Article 25(1)(e) of Regulation No 6/2002, to the use of her earlier marks No 1 and No 2 in the contested design and did not concern her trade names. Thus, according to the applicant, the findings set out in paragraphs 61 to 64 of the contested decision are unlawful, in so far as the Board of Appeal extended the scope of the appeal in breach of Article 63 of Regulation No 6/2002 and Article 27 of Delegated Regulation 2018/625. Given that, in paragraph 61 of the contested decision, there is no consideration but merely a reminder of what the applicant had relied on, the applicant’s reference to paragraphs 61 to 64 of the contested decision must be understood as being a reference to paragraphs 62 to 64 of that decision.
15 EUIPO and the intervener dispute the applicant’s arguments.
16 In paragraphs 62 to 64 of the contested decision, the Board of Appeal found that the applicant had not complied with the requirements that must be met when an earlier right is invoked in accordance with the law of a Member State, either before the Cancellation Division or before that board. Like the Cancellation Division, the Board of Appeal concluded that, since the applicant had not produced evidence of Romanian law concerning a link between personal names and trade names, the signs which she claimed as trade names could not constitute earlier rights within the meaning of Article 25(1)(e) of Regulation No 6/2002 and that the application for a declaration of invalidity had to be rejected in that regard.
17 In the present case, it must be held that the Board of Appeal examined the ground for invalidity under Article 25(1)(e) of Regulation No 6/2002 on the basis of the applicant’s trade names, even though the applicant had not mentioned her trade names in her written statement setting out the grounds of her appeal.
18 However, it must be held, as observed by EUIPO, that the Board of Appeal merely confirmed the Cancellation Division’s findings concerning the applicant’s trade names without substantiating them or calling them into question.
19 Furthermore, the statement of reasons for the contested decision relating to the applicant’s trade names has no bearing on the operative part of that decision, given that that decision annuls the decision of the Cancellation Division and refers the examination of the appeal back to the Cancellation Division for it to rule on issues which do not relate to the claim to the trade names.
20 Consequently, in so far as the first part of the applicant’s first plea is not capable of leading to the annulment of the contested decision, especially since the outcome would remain the same regardless of whether the ground for invalidity based on trade names formed part of the action and whether it was examined by the Board of Appeal, it must be rejected as ineffective.
The second part, alleging infringement of Article 63 of Regulation No 6/2002, of Article 27 of Delegated Regulation 2018/625 and of the principle of the prohibition of reformatio in pejus and the principle of res judicata as regards proof of use of earlier mark No 1
21 The applicant claims that, in so far as the intervener did not dispute the Cancellation Division’s findings relating to proof of use of earlier mark No 1, the Board of Appeal, unlike the Cancellation Division, erred in failing to apply a ‘presumption’ of use of that mark and in referring the case back for further assessment of proof of use of that mark. Thus, according to the applicant, the findings set out in paragraphs 82 and 83 of the contested decision are unlawful, in so far as the Board of Appeal (i) infringed Article 63 of Regulation No 6/2002 and Article 27 of Delegated Regulation 2018/625 by extending the scope of the appeal, (ii) infringed the principle of the prohibition of reformatio in pejus, in so far as its findings concerning proof of use of earlier mark No 1 are less favourable to the applicant than those of the Cancellation Division in that regard, and (iii) infringed the principle of res judicata by referring the appeal back to the Cancellation Division for further assessment of an issue which was not disputed and had therefore become final.
22 EUIPO and the intervener dispute the applicant’s arguments.
23 Having held, unlike the Cancellation Division, that there was a low degree of similarity between ‘medical services’ in Class 44 covered by earlier mark No 1 and ‘sanitary masks’ in Class 10, the Board of Appeal found that it was necessary to assess whether there was a likelihood of confusion between the contested design and that mark. It stated that the question of proof of use was a preliminary matter which the Cancellation Division had failed to examine. The Cancellation Division had assumed, for reasons of procedural economy, that proof of use had been established after it found that the goods and services at issue were dissimilar. Consequently, the Board of Appeal referred the case back to the Cancellation Division so that, inter alia, the two adjudicating bodies of EUIPO could rule on the question of proof of use, which is necessary for a full and complete examination of the merits of the invalidity action based on Article 25(1)(e) of Regulation No 6/2002 in the light of earlier mark No 1.
24 In the first place, as regards the alleged infringement of Article 63 of Regulation No 6/2002 and Article 27 of Delegated Regulation 2018/625, it should be recalled that Article 63(1) of Regulation No 6/2002, relating to the examination of the facts of its own motion, provides that, in proceedings relating to a declaration of invalidity, EUIPO is to be restricted in that examination to the facts, evidence and arguments provided by the parties and the relief sought.
25 In the present case, in its observations on the application for a declaration of invalidity, the intervener requested that the applicant provide proof of use of earlier mark No 1, which she did. In its observations on the written statement setting out the grounds of appeal before the Board of Appeal, it did not dispute the Cancellation Division’s findings relating to proof of use of earlier mark No 1.
26 The preliminary issue of genuine use of the earlier mark, when raised by the proprietor of the contested mark or of the contested design, must be decided before a ruling is made on the application for a declaration of invalidity (see, to that effect, judgment of 12 May 2010, Beifa Group v OHIM – Schwan-Stabilo Schwanhäußer (Instrument for writing), T‑148/08, EU:T:2010:190, paragraphs 70 and 71 and the case-law cited; see also, by analogy, judgments of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraph 88, and of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 35 and the case-law cited).
27 Thus, in accordance with Article 27(2) of Delegated Regulation 2018/625, the Board of Appeal was required to examine of its own motion the question of proof of use of the earlier mark, since it was necessary to resolve that question in order to ensure the correct application of Regulation No 6/2002 having regard to the facts, evidence and arguments submitted by the parties (see judgment of 30 November 2022, ADS L. Kowalik, B. Włodarczyk v EUIPO – ESSAtech (Accessory for wireless remote controls), T‑611/21, EU:T:2022:739, paragraph 58 and the case-law cited).
28 Therefore, the Board of Appeal did not infringe Article 63 of Regulation No 6/2002 or Article 27 of Delegated Regulation 2018/625 when it found, in paragraph 83 of the contested decision, that it was necessary to examine the question of proof of use of earlier mark No 1 and that that question had to be referred back to the Cancellation Division.
29 In the second place, as regards the principle of the prohibition of reformatio in pejus, even on the assumption that such a principle may be invoked in the context of reviewing the lawfulness of a decision of a Board of Appeal of EUIPO, it should be noted that, by the contested decision, the Board of Appeal upheld the applicant’s appeal by annulling the decision of the Cancellation Division. Therefore, since the contested decision granted the applicant’s claims in part, the applicant is not, following that decision, in a less favourable legal position than before her appeal was brought. Therefore, and in any event, the Board of Appeal did not infringe the principle of the prohibition of reformatio in pejus (order of 22 September 2022, Primagran v EUIPO – Primagaz (prımagran), T‑624/21, not published, EU:T:2022:620, paragraph 42).
30 In the third place, it should be noted at the outset that the principle of res judicata, according to which the definitive nature of a court decision cannot be called into question, does not apply to EUIPO decisions, which are administrative and not judicial in nature (see, to that effect, judgment of 21 February 2018, Repower v EUIPO – repowermap.org (REPOWER), T‑727/16, EU:T:2018:88, paragraph 61 and the case-law cited).
31 In any event, assuming that the applicant’s complaint must be understood as meaning that the question of proof of use of earlier mark No 1 had been examined by the Cancellation Division and that, in the absence of any challenge in that regard before the Board of Appeal, the Cancellation Division’s decision had become final in that regard and had acquired the authority of res judicata, that complaint must be rejected.
32 As EUIPO submits, in so far as the Cancellation Division did not examine proof of use of earlier mark No 1 and merely assumed that such use had been proved, it cannot be held that the issue was examined for the first time by the Cancellation Division and that, in the absence of any challenge in that regard, it would have become final.
33 Therefore, the Board of Appeal was correct in finding that proof of use of earlier mark No 1 had not been examined and that it was necessary to refer the case back to the Cancellation Division so that the matter could be decided by two adjudicating bodies of EUIPO.
34 In the light of all of the foregoing considerations, the second part of the applicant’s first plea and, consequently, the first plea in its entirety must be rejected.
The second plea, alleging infringement of Article 25(1)(e) of Regulation No 6/2002
35 In support of her second plea, the applicant submits that the Board of Appeal infringed Article 25(1)(e) of Regulation No 6/2002, first, in so far as it found that the applicant had not relied on Article 39(2)(c) of lege nr. 84 privind mărcile și indicațiile geografice (Law No 84 on trade marks and geographical indications) of 15 April 1998 (Monitorul Oficial al României, No 337, of 8 May 2014) (‘Law No 84/1998’) in respect of either of her earlier marks No 1 and No 2 and, secondly, in so far as it held that the goods covered by earlier mark No 2 were dissimilar to sanitary masks and were neither in competition with each other nor complementary. That plea is divided into two parts, which it is appropriate to examine separately.
The first part, alleging failure to take account of Article 39(2)(c) of Law No 84/1998
36 The applicant submits that the Board of Appeal erred in finding that she had not relied on Article 39(2)(c) of Law No 84/1998, relating to the right to prohibit the use of an earlier mark which has acquired a reputation in Romania where that use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark. The applicant submits that, by citing Article 39 of Law No 84/1998 in its entirety in her written statement setting out the grounds of her appeal before the Board of Appeal, she intended to rely on paragraph 2(c) of that article, which is why she produced so much evidence of her reputation and notoriety. She relies on that provision in respect of both earlier mark No 1 and earlier mark No 2.
37 EUIPO and the intervener dispute the applicant’s arguments.
38 In paragraphs 71 and 72 of the contested decision, the Board of Appeal stated that, although the applicant had cited, inter alia, Article 39 of Law No 84/1998 in its entirety, she did not refer to any specific provision of that article and put forward only arguments relating to the existence of a likelihood of confusion, including a likelihood of association, referred to in Article 39(2)(b) of that law. Accordingly, the Board of Appeal found that the applicant had relied solely on Article 39(2)(b) of Law No 84/1998.
39 As a preliminary point, it should be recalled that Article 39(2)(b) of Law No 84/1998 transposes Article 10(2)(b) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1) into Romanian law and that Article 39(2)(c) of Law No 84/1998 transposes Article 10(2)(c) of that directive.
40 It should also be borne in mind that the second sentence of Article 63(1) of Regulation No 6/2002 limits EUIPO’s examination, in the context of actions for a declaration of invalidity, to the facts, evidence and arguments provided by the parties and the relief sought. According to settled case-law on EU trade marks, applicable mutatis mutandis to Community designs, the Board of Appeal, when ruling on an appeal against a decision terminating invalidity proceedings, may base its decision only on the grounds that the party concerned has relied on and the related facts and evidence it has presented (see judgment of 26 April 2023, Activa – Grillküche v EUIPO – Targa (Apparatus for grilling), T‑757/21, not published, EU:T:2023:216, paragraph 49 and the case-law cited).
41 In the present case, as EUIPO submits, first, the applicant has neither specifically invoked Article 39(2)(c) of Law No 84/1998 as regards her earlier marks No 1 and No 2 nor has she developed any specific argument in support of the ground for invalidity relating to the unfair advantage which the contested design would take of the distinctive character or repute of those earlier marks or detriment it would have, and, secondly, she referred, in her written statement of the grounds for invalidity, to Article 10(2)(c) of Directive 2015/2436, but only as regards her trade names.
42 Furthermore, it should also be noted, as observed by EUIPO, that, although, during the administrative stage, the applicant provided evidence demonstrating her notoriety and the reputation of her marks, she did so only in the context of her arguments relating to the likelihood of confusion and that, therefore, it cannot be inferred from that evidence that the applicant relied on Article 39(2)(c) of Law No 84/1998.
43 Furthermore, contrary to what the applicant claims, the mere fact that she reproduced the provision of Article 39 of Law No 84/1998 in its entirety is not sufficient either to consider that she relied on paragraph (2)(c) of that article or to establish that the Board of Appeal had to analyse all the grounds for invalidity referred to in Article 39.
44 Accordingly, it must be held that the applicant did not rely on Article 39(2)(c) of Law No 84/1998 as regards her earlier marks No 1 and No 2 during the administrative stage. Therefore, EUIPO acted correctly in not basing its decision on Article 39(2)(c) of that law.
45 Consequently, the first part of the applicant’s second plea must be rejected.
The second part, alleging that there is no similarity between the goods concerned by the contested design and the goods covered by earlier mark No 2
46 In support of her second complaint, the applicant submits, in essence, that the Board of Appeal erred in finding that there was no similarity between the goods concerned by the contested design, namely cardboard boxes used for surgical masks, and the goods in Classes 3 and 25 covered by earlier mark No 2. According to the applicant, those goods have a high degree of similarity, which follows in particular from the complementary nature of the goods at issue, which are all related to the medical field. She states that the reference to ‘disposable surgical masks’ on the contested design, which the Board of Appeal did not consider to be significant, reinforces the conclusion that the goods at issue are complementary. The applicant adds that, given that surgical masks may be used by a specialist public and by the general public, who display a level of attention varying from average to high, the goods at issue may be used together and may have the same distribution channel, and that there is a likelihood of confusion and of association between the goods at issue, the commercial origin of the goods concerned by the contested design may be associated with the proprietor of earlier mark No 2.
47 EUIPO and the intervener dispute the applicant’s arguments.
48 In paragraph 80 of the contested decision, the Board of Appeal found that the goods in Classes 2 and 3 covered by earlier mark No 2 were dissimilar to ‘sanitary masks’ in Class 10. It stated that, first, the goods at issue have a different nature and purpose, different distribution channels and a distinctly different origin and method of use and, secondly, they are neither in competition with each other nor complementary. Next, in paragraph 81 of the contested decision, it found, in essence, that there was no likelihood of confusion between earlier mark No 2 and the contested design in view of the lack of similarity between the goods at issue.
49 As a preliminary point, and as EUIPO and the intervener in fact point out, earlier mark No 2 is not registered for services but, as is apparent from paragraph 6 above, only for goods in Classes 3 and 25, which correspond respectively to ‘cosmetic preparations and non-medicated toilet articles; non-medicated toothpaste; perfumes, essential oils; bleaching preparations and other washing substances; cleaning, polishing, scouring and abrasive preparations’ and to ‘clothing, footwear and headgear’.
50 Furthermore, it is common ground between the parties that the goods concerned by the contested design are cardboard boxes which, according to the observations of the parties and the word elements mentioned in the contested design, serve as packaging for sanitary masks, which are included in Class 10.
51 It must be borne in mind that, under Article 25(1)(e) of Regulation No 6/2002, a Community design may be declared invalid only if it is used in a subsequent design and EU law or the law of the Member State concerned governing that sign confers on the right holder the right to prohibit such use.
52 In that regard, under Article 39(2)(b) of Law No 84/1998, the proprietor of a trade mark has the right to prevent third parties from using, without his or her consent, in the context of commercial activity, any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
53 It should also be noted that Article 39(2)(b) of Law No 84/1998 transposes Article 10(2)(b) of Directive 2015/2436 into Romanian law and, accordingly, it must be interpreted in the light of the case-law relating to the latter provision.
54 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. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question, 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, to that effect, judgments of 3 October 2017, BMB v EUIPO – Ferrero (Container for sweets), T‑695/15, not published, EU:T:2017:684, paragraph 30, and of 7 February 2018, Şölen Çikolata Gıda Sanayi ve Ticaret v EUIPO – Zaharieva (Packaging for ice-cream cornets), T‑794/16, not published, EU:T:2018:70, paragraph 27).
55 According to settled case-law, when assessing the similarity between the goods at issue, all the relevant factors relating to the link between those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or complementary (see judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 36 and the case-law cited). Other factors may also be taken into account such as the distribution channels of the goods concerned (see, to that effect, judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
56 As regards, in particular, the complementary nature of the goods and services, which may alone justify the conclusion that the goods and services are similar, it should be noted that goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or for the provision of those services lies with the same undertaking. Thus, when determining whether goods or services are complementary, the perception of that public of the importance of a product or service for the use of another product or service should, ultimately, be taken into account (see judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 37 and the case-law cited).
57 In the present case, the Board of Appeal did not err in finding that there was no similarity between the goods concerned by the contested design and the goods covered by earlier mark No 2.
58 As regards the nature and intended purpose of the goods at issue, it is settled case-law that, notwithstanding the fact that the Nice Classification was adopted for exclusively administrative purposes, the explanatory notes on the different classes of that classification are relevant in determining the nature and purpose of the goods and services under comparison (see judgment of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easySTEP), T‑21/19, EU:T:2020:310, paragraph 55 and the case-law cited).
59 In that regard, it is apparent from the explanatory notes to the Nice Classification that Class 3 includes mainly ‘non-medicated toiletry preparations’, that Class 25 of the Nice Classification specifies that that class does not include certain clothing for special use, for example, ‘clothing especially for operating rooms’, which falls within Class 10, and that Class 10 includes ‘special clothing for medical purposes’.
60 The explanations contained in those notes lead to the conclusion that the ‘clothing, footwear and headgear’ which are included in Class 25 are not intended for medical use, contrary to what the applicant claims.
61 Furthermore, ‘sanitary masks’ in Class 10 have a medical purpose. As EUIPO submits, it should be noted that ‘disposable surgical masks’ are included in the category of ‘sanitary masks’ and that the Board of Appeal took them into consideration when comparing the goods at issue.
62 Accordingly, the goods covered by earlier mark No 2 are not intended to be used in the medical field, unlike sanitary masks in Class 10. Therefore, contrary to what the applicant claims, the situation is not identical to that of earlier mark No 1, which covers ‘medical services’ in Class 44.
63 Therefore, the goods at issue are different and are also used for different purposes.
64 As regards the distribution channels of the goods at issue, it should be noted, as observed by EUIPO, that the fact that ‘sanitary masks’ may be sold in pharmacies and health-related sections of supermarkets, and that the goods in Class 3 are generally sold in the same outlets, is not particularly significant, since very different kinds of goods may be found in such outlets, without consumers automatically believing that they have the same commercial origin (see judgment of 11 October 2023, Dr. Rudolf Liebe Nachfolger v EUIPO – Bit Beauty (ayuna LESS IS BEAUTY), T‑490/22, not published, EU:T:2023:616, paragraph 29 and the case-law cited).
65 With regard to ‘clothing, footwear and headgear’ in Class 25, those goods are not sold in pharmacies or in health-related sections of supermarkets. Accordingly, those goods and sanitary masks are sold in different outlets.
66 As regards whether the goods at issue are in competition with each other or are complementary, it must be held that those goods are not complementary within the meaning of the case-law cited in paragraph 56 above. Since the goods covered by earlier mark No 2 are not indispensable or important for the use of sanitary masks, consumers would not think that the same undertaking is responsible for manufacturing those goods. Contrary to what the applicant claims, the word elements ‘disposable surgical masks’ on the contested design in no way reinforce the complementary nature of the goods at issue for the reasons set out in paragraph 62 above.
67 Therefore, the Board of Appeal was correct in finding that the goods concerned by the contested design were different from the goods covered by earlier mark No 2 and, in particular, that they were not complementary.
68 Furthermore, it must be held that the evidence produced by the applicant, including the market survey of 18 June 2022, according to which some consumers establish a link between the contested design and the applicant, is not such as to call that finding into question. That evidence does not concern the goods covered by earlier mark No 2 and, therefore, does not demonstrate any similarity between the goods at issue.
69 The second part of the second plea and, consequently, the second plea in its entirety must therefore be rejected. It follows that the applicant’s first head of claim must be dismissed and, consequently, the second head of claim for alteration of that decision must be dismissed, without there being any need to rule on the Court’s jurisdiction to hear and determine the third head of claim.
Costs
70 Under 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.
71 Since the applicant has been unsuccessful, she must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Ms Adina Alberts to bear her own costs and to pay those incurred by Techtex SRL;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira | Kancheva | Öberg |
Delivered in open court in Luxembourg on 12 February 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
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