ORDER OF THE COURT OF FIRST INSTANCE (Third Chamber)
6 December 2006 (*)
(Community trade mark – Community figurative trade mark movingpeople.net – Opposition of the proprietor of the national word mark MOVING PEOPLE – Partial refusal of registration – Applicant’s acquisition of the earlier trade mark– No need to adjudicate)
In Case T‑92/05,
movingpeople.net International BV, established in Helmond (Netherlands), represented by G. van Roeyen and T. Berendsen, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Thomas Schäfer, residing in Groß Schlamin, Schashagen (Germany), represented by D. Rohmeyer, lawyer,
ACTION for annulment brought against the decision of the First Board of Appeal of OHIM of 20 December 2004 (Case R 410/2004-1), relating to opposition proceedings between Thomas Schäfer and movingpeople.net International BV,
THE COURT OF FIRST INSTANCE
OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of M. Jaeger, President, V. Tiili and O. Czúcz, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 February 2005,
having regard to the response lodged at the Court Registry on 15 June 2005,
makes the following
Order
Background to the dispute
1 On 11 December 2000, the applicant filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The trade mark for which registration is sought is the following figurative mark:
3 The goods for which registration is sought fall within Classes 10, 12 and 20 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, in respect of each of the classes, to the following description:
– ‘surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials’, falling within Class 10;
– ‘vehicles; apparatus for locomotion by land, air or water’, falling within Class 12;
– ‘furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’, falling within Class 20.
4 That Community trade mark application was published in Community Trade Marks Bulletin No 25/2002 of 2 April 2002.
5 On 6 June 2002, Thomas Schäfer filed a notice of opposition under Article 42 of Regulation No 40/94, directed against all of the products referred to in the trade mark application and based on the alleged existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, with the earlier word mark MOVING PEOPLE, registered in Germany on 19 October 1999 in respect of goods falling within Classes 12 and 37 (building construction; repair; installation services) of the Nice Agreement.
6 By decision of 31 March 2004, OHIM’s Opposition Division allowed the opposition in respect of goods falling within Class 12 of the Nice agreement.
7 On 26 May 2004, the applicant lodged an appeal against the Opposition Division’s decision.
8 By decision of 20 December 2004 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal, finding that there was a likelihood of confusion between the conflicting trade marks in respect of products falling within Class 12 of the Nice Agreement. Concerning the comparison between the signs, the Board of Appeal held, inter alia, that the fact that the signs were conceptually identical and phonetically similar was sufficient to outweigh their visual differences.
Procedure and forms of order sought
9 By application lodged at the Registry of the Court of First Instance on 25 February 2005, the applicant instituted these proceedings.
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 By letter of 11 July 2005, the applicant informed the Court of First Instance that it had concluded an agreement with the intervener, the object of which was the transfer of the earlier word mark MOVING PEOPLE to the applicant. It pointed out that, following that agreement, since the applicant was the proprietor of the two trade marks at issue, no future likelihood of confusion was possible as regards the commercial origin of the goods. The applicant, however, made it clear that it did not intend to give up its action and requested leave from the Court to lodge a reply to OHIM’s response, in order to give its opinion, in the context of its claims for annulment, on the new and fundamental evidence which the transfer to it of the earlier trade mark constituted.
13 By letter of 13 July 2005, the intervener confirmed to the Court that the trade mark had been tranferred, while seeking leave to intervene in the proceedings in support of the forms of order sought by the applicant.
14 By letter of 19 July 2005, the Court Registry called on the parties to submit their comments on whether it was still necessary to adjudicate on the case.
15 By letter of 22 July 2005, OHIM observed that, in accordance with Article 135(4) of the Rules of Procedure of the Court of First Instance, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal, the subject-matter of the proceedings being the legality of the contested decision at the time when it was taken. Thus, according to OHIM, it is no longer necessary to adjudicate on the case, since the trade marks at issue now belong to the same proprietor.
16 By letter of 1 August 2005, the applicant submitted that this case can be distinguished from that which gave rise to the order of the Court of First Instance in Case T‑10/01 Lichtwer Pharma v OHIM – Biofarma(Sedonium) [2003] ECR II-2225 in so far as, in the case in question, the intervener supported the forms of order sought by the applicant. Thus, a decision as to the substance taking into account the transfer of the earlier mark is still needed.
17 By fax of 2 August 2005, the intervener confirmed that it supported the forms of order sought by the applicant.
The need to adjudicate
18 The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (Case T‑423/04 Bunker & BKR v OHIM – Marine Stock (B.K.R.) [2005] ECR II-4305, paragraph 51).
19 In the present case, in consequence of the applicant’s acquisition of the earlier trade mark, the two conflicting trade marks are held by a single company such that, necessarily, no future likelihood of confusion is possible concerning the commercial origin of the goods covered by those trade marks.
20 Thus, case-law shows that, where the likelihood of confusion between the mark for which registration is sought and the earlier mark is eliminated during proceedings before the Community judicature for the purpose of ruling on an appeal to OHIM against the decision adjudicating on the opposition, the basis of the proceedings is eliminated and, consequently, they become devoid of purpose (orders in Case T‑8/02 Zapf Creation v OHIM – Jesmar(Colette Zapf Creation Kombi Collection) [2003] ECR II‑279 ; Sedonium; Case T‑120/03 Synopharm v OHIM – Pentafarma (DERMAZYN) [2004] ECR II‑509; of 27 June 2005 in Case T‑384/03 Reti Televisive Italiane v OHIM – Microarea(JUMPY), not published in the ECR; and of 1 July 2005 in Case T‑482/04 KOMSA v OHIM – Anders + Kern Präsentationssysteme @k, not published in the ECR).
21 Therefore, this action has become devoid of purpose following the transfer of the earlier trade mark to the applicant.
22 The fact remains that the applicant has not put forward any argument such as to challenge that finding.
23 It has merely argued that the intervener supported the applicant’s claims for annulment. However, that fact is irrelevant since it does not bear any relationship to the elimination of a possible likelihood of confusion regarding the commercial origin of the goods concerned as a result of the fact that the applicant is now the proprietor of both trade marks at issue.
24 It must therefore be declared, in accordance with Article 113 of the Rules of Procedure, that the action has become devoid of purpose and there is no need to adjudicate on it.
Costs
25 Article 87 of the Rules of Procedure provides that, where a case does not proceed to judgment, the costs shall be in the discretion of the Court of First Instance.
26 In the situation in the present case, the case is not proceeding to judgment due to an agreement concluded between the applicant and the intervener. Therefore, the applicant must be ordered to bear its own costs and to pay those incurred by the defendant. The intervener shall bear its own costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby orders:
1. There is no need to adjudicate on the action.
2. The applicant is ordered to bear its own costs and to pay those incurred by the defendant.
3. The intervener shall bear its own costs.
Luxembourg, 6 December 2006.