Case T‑512/15
Sun Cali, Inc.
v
European Union Intellectual Property Office
(EU trade mark — Invalidity proceedings — EU figurative mark SUN CALI — Earlier national figurative mark CaLi co — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 — Representation before the Board of Appeal — Real and effective industrial or commercial establishment in the European Union — Legal persons with economic connections — Article 92(3) of Regulation No 207/2009)
Summary — Judgment of the General Court (Sixth Chamber), 22 September 2016
1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Account taken by the General Court of matters of law and fact not previously raised before the departments of EUIPO — Precluded
(Council Regulation No 207/2009, Art. 65)
2. EU trade mark — Procedural provisions — Representation before EUIPO — Natural or legal persons having their domicile, or principal place of business or a real and effective industrial or commercial establishment in the European Union — Proof of the existence of a real and effective commercial establishment — Concept of a branch
(Council Regulation No 207/2009, Art. 92(3))
3. EU trade mark — Procedural provisions – Representation before EUIPO – Natural or legal persons having their domicile, or principal place of business or a real and effective industrial or commercial establishment in the European Union — Concept — Sole trader — Not included
(Council Regulation No 207/2009, Art. 92(3))
4. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
5. EU trade mark — Procedural provisions — Statement of reasons for decisions
(Council Regulation No 207/2009, Art. 75, first sentence)
6. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Degree of attention of the relevant public
(Council Regulation No 207/2009, Art. 8(1)(b))
7. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
8. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative marks SUN CALI and CaLi co
(Council Regulation No 207/2009, Art. 8(1)(b))
9. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
1. See the text of the decision.
(see para. 16)
2. As provided in the first sentence of Article 92(3) of Regulation No 207/2009 on the EU trade mark, natural or legal persons having their domicile, or principal place of business or a real and effective industrial or commercial establishment in the European Union may be represented before EUIPO by an employee.
However, mere extracts from a website along with a few photographs are not sufficient, per se, and in the absence of any other particulars, to demonstrate the existence of a real and effective commercial establishment in the European Union.
The concept of a branch implies a place of business which has the appearance of permanency, such as the extension of a parent body, has a management and is materially equipped to negotiate business with third parties so that the latter, although knowing that there will, if necessary, be a legal link with the parent body, the head office of which is abroad, do not have to deal directly with such parent body but may transact business at the place of business constituting the extension.
(see paras 21, 29, 30)
3. As provided in the first sentence of Article 92(3) of Regulation No 207/2009 on the EU trade mark, natural or legal persons having their domicile, or principal place of business or a real and effective industrial or commercial establishment in the European Union may be represented before EUIPO by an employee. An employee of such a legal person may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the European Union.
A sole trader, with no legal personality, falls outside the scope of the second sentence of Article 92(3) of Regulation No 207/2009, and therefore, pursuant to that provision, may not represent a legal person established outside the European Union with which it may have economic connections within the meaning of that provision.
(see paras 21, 34)
4. See the text of the decision.
(see paras 44, 45, 76)
5. See the text of the decision.
(see para. 46)
6. See the text of the decision.
(see para. 47)
7. See the text of the decision.
(see paras 49, 52, 54)
8. See the text of the decision.
(see paras 55-57, 63, 71, 74, 75, 79)
9. See the text of the decision.
(see para. 58)