CELEX: 62010TJ0570
Community trade mark
Opposition proceedings
Application for a Community figurative mark representing a wolf’s head
Earlier national and international figurative marks WOLF Jardin and Outils WOLF
Relative grounds for refusal
Detriment to the distinctive character or repute of the earlier mark
Article 8(5) of Regulation (EC) No 207/2009

Background to the dispute
On 9 March 2006, Entec Industries Ltd filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 Community trade mark (
OJ 2009 L 78, p. 1
)).
The mark in respect of which registration was sought is the following figurative sign:
The goods in respect of which registration was sought, after the restriction made during the proceedings before OHIM, are in Class 7 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Machines for professional and industrial processing of wood and green waste; professional and industrial wood chippers and shredders’.
The Community trade mark application was published in
Community Trade Marks Bulletin
No 38/2006 of 18 September 2006.
On 18 December 2006, the intervener, Société Elmar Wolf, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
The opposition was based, in particular, on the following earlier rights:
—
French figurative mark, registered on 8 April 1999 under number 99786007, covering goods in Classes 1, 5, 7, 8, 12 and 31, of which the figurative sign in red and yellow is reproduced below:
—
French figurative mark, registered on 22 September 1948 under number 1480873 for goods in Classes 7 and 8, the international figurative mark, registered on 22 June 1951 under number 154431, covering goods in Classes 7 and 8, with effect in Spain and in Portugal, and the international figurative mark, registered on 20 January 1969 under number 352868, covering goods in Classes 7, 8, 12 and 21, with effect in Spain. The figurative sign in black and white corresponding to those three marks is reproduced below:
The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) and Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009).
On 24 September 2007, Entec Industries assigned the application for registration to the applicant, Environmental Manufacturing LLP.
On 2 October 2007, the applicant requested, in accordance with Article 43 of Regulation No 40/94 (now Article 42 of Regulation No 207/2009), that the intervener adduce evidence of use of the earlier marks. The intervener then presented documentary evidence to that effect.
On 25 January 2010, the Opposition Division dismissed the opposition based on Article 8(1)(b) of Regulation No 207/2009 on the ground that there was no likelihood of confusion between the marks at issue. The Opposition Division also dismissed the opposition based on Article 8(5) of Regulation No 207/2009 on the ground that the intervener had not adduced evidence of any detriment to the repute of the earlier marks or any unfair advantage gained from them.
On 23 March 2010, the intervener filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
By decision of 6 October 2010 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal and annulled the decision of the Opposition Division. With regard to Article 8(5) of Regulation No 207/2009, it held that the earlier marks were highly reputed in three Member States. It then held that there was some similarity between the marks at issue and that the relevant public could establish a link between the signs, having regard to the distinctiveness and reputation of the earlier marks, and to the similarity of the goods covered by the marks at issue. Finally, the Board of Appeal concluded, referring to the arguments put forward by the intervener, that the mark applied for could dilute the unique image of the earlier marks and could take unfair advantage from their distinctive character or their reputation. With regard to Article 42(2) and (3) of Regulation No 207/2009, the Board of Appeal held that the earlier marks had been put to genuine and continuous use for the protected goods.
Forms of order sought
The applicant claims that the Court should:
—
annul the contested decision;
—
order OHIM to pay the costs.
OHIM and the intervener contend that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
Law
In support of its appeal, the applicant relies on two pleas in law. The first plea in law alleges infringement of Article 42(2) and (3) of Regulation No 207/2009. According to the applicant, the intervener has not shown that the earlier trade marks have been put to genuine use for the goods covered by the mark applied for. The second plea in law alleges infringement of Article 8(5) of Regulation No 207/2009. The applicant claims that the Board of Appeal applied that provision wrongly.
The first plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009
Article 42(2) of Regulation No 207/2009 provides the following:
‘If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.’
Under Article 42(3) of Regulation No 207/2009, paragraph 2 applies to earlier national trade marks referred to in Article 8(2)(a) of that regulation, by substituting use in the Member State in which the earlier national mark is protected for use in the Community.
The applicant submits that the intervener only showed that it had used the earlier marks for garden machinery and tools intended for the general public, but not for machinery and tools intended for professional gardening. Domestic garden machinery and tools constitute a sub-category of goods that is distinct from that of professional garden machinery and tools. Referring to Case
T-126/03
Reckitt Benckiser (España)
v
OHIM - Aladin (ALADIN)
[2005] ECR II-2861
, the applicant claims that the Board of Appeal should have taken account of that distinction in its assessment of the genuine use of the earlier marks. The scope of protection of the earlier marks should have been restricted as a result.
OHIM and the intervener dispute the applicant’s arguments.
First of all, it must be borne in mind that Article 42 of Regulation No 207/2009 relates to establishing genuine use of the goods or services cited as justification for the opposition. Those goods are, in the present case, the goods covered by the earlier marks invoked by the intervener and not the goods covered by the mark applied for. However, the applicant does not dispute the fact that the intervener has shown that the earlier trade marks have been put to genuine use for the goods to which they relate.
It follows from
ALADIN
, cited above in paragraph 18, on which the applicant relies, that, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it should be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (
ALADIN
, cited above in paragraph 18, paragraph 46).
So far as concerns garden machinery and tools covered by the earlier marks, it is not possible to distinguish distinct categories or sub-categories of goods according to whether they are intended for the general public or for professional gardening. While it is likely that some of those goods are intended for professional gardening, the fact remains that the majority of those goods meet the same gardening needs, that both professional and domestic gardeners use the same tools and that domestic gardeners are also likely to buy large gardening appliances, such as those offered by the applicant. For example, professional gardeners based in urban areas may not need to buy large garden machinery, whereas domestic gardeners living in the countryside may have such a need, in particular for the upkeep of wooded areas.
Although the applicant correctly points out that the Board of Appeal should have examined the question of genuine use before it examined the merits of the opposition put forward by the intervener, the applicant has failed to adduce evidence that the Board of Appeal made an error of assessment of law with regard to proof by the intervener of genuine use within the meaning of Article 42 of Regulation No 207/2009.
The first plea in law must therefore be dismissed as unfounded.
The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
Above all, it should be recalled that, under Article 8(5) of Regulation No 207/2009, ‘upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.
It is also apparent from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: first, that the marks at issue are identical or similar; second, that the earlier mark cited in opposition has a reputation and, third, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Since those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case
T-67/04
Spa Monopole
v
OHIM - Spa-Finders Travel Arrangements (SPA-FINDERS)
[2005] ECR II-1825
, paragraph 30).
So far as concerns the third condition referred to in the previous paragraph, Article 8(5) of Regulation No
207/2009 distinguishes three distinct types of risk, namely that use of the trade mark applied for without due cause, first, would adversely affect the distinctive character of the earlier mark, second, would cause detriment to the repute of the earlier mark, or, third, would take unfair advantage of the distinctive character or repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (see Case T-215/03
Sigla
v
OHIM - Elleni Holding (VIPS)
[2007] ECR II-711
, paragraphs 36 to 42 and the case-law cited). Where the first two conditions referred to in the previous paragraph are met, just one of those three types of injury suffices for Article 8(5) of Regulation No 207/2009 to apply (Case
C-252/07
Intel Corporation
[2008] ECR I-8823
, paragraph 28).
In the present case, the applicant submits that the Board of Appeal erred in analysing Article 8(5) of Regulation No 207/2009 with regard to both the risk of detriment caused to the distinctive character of the earlier marks (‘the risk of dilution’) and the risk that unfair advantage of the distinctive character or repute of the earlier marks is taken by the applicant (‘the risk of free-riding’).
First of all, those objections should be examined inasmuch as they concern the risk of dilution and, second, inasmuch as they relate to the risk of free-riding.
The relevant public
In paragraph 16 of the contested decision, the Board of Appeal held, so far as concerns the goods referred to in Class 7 of the Nice Agreement, that the relevant public is the general public of Spain, France and Portugal and is reasonably well informed and reasonably observant and circumspect.
The applicant submits that the risk of dilution must be assessed by reference to the perception of the target public of the earlier marks whereas the risk of free-riding must be assessed by reference to the perception of the target public of the mark applied for. In so far as the Board of Appeal made no such distinction, by considering the public to be always the same, irrespective of the type of injury at issue, it committed an error in law.
It must be noted, as the applicant submits, that the public to be taken into account varies according to the type of injury alleged by the proprietor of the earlier mark. On the one hand, both the distinctive character and the repute of the earlier mark must be assessed by reference to the perception of the relevant public, which consists of average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. Accordingly, the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. On the other hand, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (
Intel Corporation
, cited above in paragraph 27, paragraphs 33 to 36).
It follows that the Board of Appeal is, in principle, required to distinguish the relevant public according to the type of injury considered under Article 8(5) of Regulation No 207/2009.
However, the fact that the Board of Appeal did not make that distinction in the present case does not affect the result of its assessment of the risk of dilution. As is apparent from paragraph 32 above and as the applicant itself stated in its application, the relevant public for the purposes of assessing such a risk is the target public of the earlier marks. However, it was exactly that public that the Board of Appeal used for the purposes of its assessment.
Consequently, the objection that the Board of Appeal committed an error in law in its identification of the relevant public is ineffective inasmuch as concerns assessment of the risk of dilution and must, therefore, be rejected.
The link between the marks at issue
According to settled case-law, the protection provided by Article 8(5) of Regulation No 207/2009 is not conditional on there being a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant public. It is sufficient for the degree of similarity between those marks to have the effect that the relevant public establishes a link between them (see, to that effect, judgment of the General Court in Case T-137/05
La Perla
v
OHIM — Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC)
, not published in the ECR, paragraph 34 and the case-law cited).
According to the case-law of the Court of Justice relating to the interpretation of Article 4(4)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (
OJ 1989 L 40, p. 1
), the content of which is, in essence, identical to that of Article 8(5) of Regulation No 207/2009, the following may be cited as relevant factors in assessing whether the abovementioned link exists: the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (
Intel Corporation
, cited above in paragraph 27, paragraph 42).
In the present case, the applicant claims that the Board of Appeal did not apply the criteria referred to in paragraph 37 above to examine whether the consumers of the goods in question established a link between the marks at issue.
The applicant submits that the existence of such a link is extremely improbable. First, the applicant claims that the evidence of use adduced by the intervener shows that use of the earlier marks, and therefore their reputation, is limited to the domestic gardening sector. In the light of the fact that the applicant’s goods are only intended for professional and specialised gardening, it is extremely improbable that the average consumer of the goods for which the earlier marks have a reputation would encounter the mark applied for. Second, there are major differences between the marks at issue.
OHIM and the intervener take the view that those arguments are unfounded.
First of all, it must be borne in mind that the link between the marks at issue must be appreciated globally, taking into account all factors relevant to the circumstances of the case (Case
C-408/01
Adidas-Salomon and Adidas Benelux
[2003] ECR I-12537
, paragraph 30).
Although, in
Intel Corporation
, cited above in paragraph 27 (paragraph 42), the Court set out a number of criteria with which the existence of such a link may be established, that list is not exhaustive and is not required to be applied in its entirety in each individual case. On the contrary, it is possible that a link between the marks at issue may be established on the basis of some of those criteria or be the result of factors which are not set out in
Intel Corporation
. The question whether the relevant public will make a connection between the marks at issue is a question of fact which must be answered in the light of the facts and circumstances of each individual case.
However, in the present case and contrary to what the applicant claims, the Board of Appeal duly took account of some of the criteria set out in
Intel Corporation
, cited above in paragraph 27. The Board of Appeal stated, in paragraph 26 of the contested decision, that the earlier marks were highly reputed, that there is a degree of similarity between the marks at issue and that the goods covered by those marks are identical or very similar.
With regard more specifically to the degree of similarity between the marks at issue, the Board of Appeal considered in detail, in paragraphs 19 to 23 of the contested decision, the visual similarity of the two marks, which both represent a canine, the fact that there is no need for a phonetic comparison for a purely figurative mark, and the conceptual similarity between those marks.
Admittedly, as observed by the applicant, since the canines represented by the two marks are different, one drawn in detail which has an aggressive quality whereas the second, apparently more aimiable, is less detailed, the fact remains that the Board of Appeal duly took account of those differences in its analysis and that it rightly held, in paragraph 19 of the contested decision, that those differences were not of such importance that the relevant public, which displays an average level of attention and has imperfect recollection, will not connect the image of the mark applied with that of the earlier marks.
So far as concerns the similarity of the goods covered by the marks at issue, it must be noted that the applicant’s argument is based on the incorrect premiss that a coherent distinction may be drawn between, on the one hand, garden machinery and tools intended for the general public and, on the other, garden machinery and tools intended for professional use. It is apparent from the analysis of that argument in paragraph 22 above that the goods covered by the earlier marks are intended for use by both professional and domestic gardeners and that demand for the goods offered by the applicant is also likely to come from both professional and domestic users.
It follows that the Board of Appeal correctly held that the relevant public might establish a link between the signs represented by the marks at issue and that the plea raised by the applicant in that respect must therefore be rejected as unfounded.
The economic effects of a connection between the marks at issue
So far as concerns the risk of dilution, the applicant claims, referring to paragraph 77 of
Intel Corporation
, cited above in paragraph 27, that the proprietor of the earlier mark must plead and prove that use of the later mark will have an impact on the behaviour of the consumers of the goods covered by the earlier mark or that there was a serious risk that such an impact would occur in the future. The Board of Appeal failed to consider that impact in the present case.
The applicant claims that the intervener should have submitted its arguments specifically explaining the harm caused by dilution. Thus, the mere mention of dilution is insufficient to justify the application of Article 8(5) of Regulation No 207/2009.
In the first place, it must be borne in mind that the ground for refusal based on the risk of dilution, as provided for in Article 8(5) of Regulation No 207/2009, contributes, along with the other grounds for refusal set out in that article, to protect the primary function of the mark, that is to say as an indication of origin. So far as concerns the risk of dilution, that function is compromised where the earlier mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case where the earlier mark, which used to arouse immediate association with the goods or services for which it is registered, is no longer capable of doing so (
Intel Corporation
, cited above in paragraph 27, paragraph 29).
It is clear from
Intel Corporation
, cited above in paragraph 27, that the proprietor of the earlier mark who invokes the protection granted by Article 8(5) of Regulation No 207/2009 is required to adduce evidence that use of the later mark would be detrimental to the distinctive character of the earlier mark. To that end, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (
Intel Corporation
, cited above in paragraph 27, paragraphs 37, 38 and 71).
Accordingly, the proprietor of the earlier mark must adduce
prima facie
evidence of a future risk, which is not hypothetical, of detriment (
SPA-FINDERS
, cited above in paragraph 26, paragraph 40). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (Case
T-181/05
Citigroup and Citibank
v
OHIM - Citi (CITI)
[2008] ECR II-669
, paragraph 78).
It cannot, however, be required that, in addition to those elements, the proprietor of the earlier mark must show an additional effect, caused by the introduction of the later mark, on the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered. Such a condition is not set out in Article 8(5) of Regulation No 207/2009 or in
Intel Corporation
, cited above in paragraph 27.
So far as concerns paragraph 77 of
Intel Corporation
, cited above in paragraph 27, it is apparent from the choice of words ‘it follows’ and from the structure of paragraph 81 of that judgment that the change in the economic behaviour of the consumer, to which the applicant refers in support of its claim, is established if the proprietor of the earlier mark has shown, in accordance with paragraph 76 of
Intel Corporation
, that the mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.
It must be examined whether the Board of Appeal applied those principles correctly in the present case.
With regard, first, to the claim that the intervener merely mentioned the existence of a risk of dilution without further substantiating it, the Board of Appeal points out, in paragraph 30 of the contested decision, that the intervener developed its line of argument during the appeal procedure. The intervener claimed, inter alia, that use of the mark applied for would lead to an erosion of the earlier marks’ reputation, since the relevant public would no longer associate the intervener’s goods with those marks, and that the figurative part of those marks would be rendered commonplace and would lose its highly distinctive character.
Although the summary of the arguments advanced by the intervener in paragraph 30 of the contested decision was succinct, it must be held that the intervener has indeed substantiated its arguments such as to show a risk, which is not hypothetical, that use of the mark applied for could be detrimental to the earlier marks.
So far as concerns, second, the analysis of the substance of the arguments advanced by the intervener, it must be observed, first, that the Board of Appeal attached great importance, in paragraph 36 of the contested decision, to the highly distinctive character of the earlier signs, stating that the wolf’s head element had no clear link to the goods in question. There is no connection between the figurative element representing the wolf’s head used in the earlier marks and the goods sold by the intervener, since use of that element is explained, in essence, by the fact that the intervener’s company name contains the word ‘wolf’.
The Board of Appeal therefore correctly analysed the highly distinctive character of the earlier marks. In accordance with the case-law, the stronger the earlier mark’s distinctive character and reputation the more likely it is that detriment will be caused to it (
Intel Corporation
, cited above in paragraph 27, paragraphs 67 and 74, and
SPA-FINDERS
, cited above in paragraph 26, paragraph 41).
In the second place, the Board of Appeal held, in paragraph 36 of the contested decision, that the identical or similar character of the goods in question should be taken into account.
In that regard, it must be borne in mind, first, that Article 8(5) of Regulation No 207/2009 may be relied on in support of an opposition lodged against not only an application for a Community trade mark covering goods and services which are not identical or not similar to those designated by the earlier mark but also as against an application for a Community trade mark covering goods which are identical or similar to those of the earlier mark (see, by analogy, Case
C-292/00
Davidoff
[2003] ECR I-389
, paragraphs 24 to 26, and
Adidas-Salomon and Adidas Benelux
, cited above in paragraph 41, paragraphs 19 to 22).
It must be found, next, that the fact that competitors use somewhat similar signs for identical or similar goods compromises the immediate connection that the relevant public makes between the signs and the goods at issue, which is likely to undermine the earlier mark’s ability to identify the goods for which it is registered as coming from the proprietor of that mark. In the present case, it must therefore be held that use by the applicant of a canine’s head as a mark for garden and horticultural tools, identical or similar to those sold by the intervener under marks also representing a canine’s head, necessarily means that the consumers of those tools will no longer immediately associate the image of a canine with the intervener’s goods.
In that regard, it must also be borne in mind that the mark acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure and youth. To that effect, the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed, in particular, by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor (
VIPS
, cited above in paragraph 27, paragraph 35).
In the present case, the fact that the earlier marks no longer arouse immediate association with the goods for which it is registered and used would undermine the commercial efforts made by the intervener for the development of its marks.
In the third place, the Board of Appeal held, in paragraph 37 of the contested decision, that the applicant never stated a ‘due cause’ within the meaning of Article 8(5) of Regulation No 207/2009 to explain or justify using the canine’s head in the mark applied for. Those facts are not contested by the applicant.
Consequently, the Board of Appeal was fully entitled to find that the use of the mark applied for is likely to be detrimental to the distinctive character of the earlier marks. The applicant’s argument that it is necessary to show the economic effects of the connection between the marks at issue cannot therefore be upheld.
In so far as the Board of Appeal thus applied Article 8(5) of Regulation No 207/2009 correctly on account of the risk of dilution caused by the mark applied for, it is not necessary to consider the risk of free-riding on which the contested decision is also based. As stated in paragraph 27 above, just one of those three types of injury set out in Article 8(5) of Regulation No 207/2009 suffices for that provision to apply.
It follows from the above that the second plea in law must be rejected as unfounded.
The application must therefore be dismissed in its entirety.
Costs
Under Article 87(2) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and by the intervener.

On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:

1.
Dismisses the action;

2.
Orders Environmental Manufacturing LLP to pay the costs.

Pelikánová
Jürimäe
Van der Woude
Delivered in open court in Luxembourg on 22 May 2012.
[Signatures]
(
*1
)	Language of the case: English.