CELEX: 62013TJ0624
Community trade mark
Opposition proceedings
Figurative mark Darjeeling
Earlier Community collective word and figurative marks DARJEELING
Relative grounds for refusal
Article 8(1)(b) and (5) of Regulation (EC) No 207/2009

Background to the dispute
On 22 October 2010, the intervener, Delta Lingerie, 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 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 figurative sign reproduced below, comprising the word element ‘darjeeling’ depicted in white letters inside a light green rectangle:
The goods and services in respect of which registration was sought are in Classes 25, 35 and 38 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 25: ‘Women’s undergarments and day and night lingerie, in particular girdles, bodies, bustiers, basques, bras, panties, G-strings, tangas, brassieres, shorties, boxer shorts, garter belts, suspenders, garters, camisoles, short nighties, panty hose, stockings, swimwear; Clothing, knitwear, body linen, slipovers, T-shirts, corsets, bodices, short nighties, boas, overalls, combinations (clothing), sweaters, bodies, pyjamas, nightgowns, trousers, indoor trousers, shawls, dressing gowns, bathrobes, swimwear, bathing trunks, petticoats, scarves’;
—
Class 35: ‘Retailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen; Business consultancy with regard to the creation and operation of retail outlets and central purchasing agencies for retailing and advertising purposes; Sales promotion (for others), advertising, business management, business administration, on-line advertising on a computer network, distribution of advertising material (leaflets, flyers, free newspapers, samples), arranging newspaper subscriptions for others; Business information or enquiries; Organisation of events and exhibitions for commercial or advertising purposes, advertising management, rental of advertising space, radio and television advertising, advertising sponsorship’;
—
Class 38: ‘Telecommunications, computer-aided transmission of messages and images, interactive television broadcasting services relating to the presentation of products, communications by computer terminals, communications (transmissions) on the open and closed world wide web’.
The Community trade mark application was published in
Community Trade Marks Bulletin
No 4/2011 of 7 January 2011.
On 7 April 2011, the applicant, The Tea Board, a body formed under the 1953 Indian Tea Act (No 29 of 1953) and empowered to administer the production of tea, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
The opposition was based on the following earlier trade marks:
—
the earlier Community collective word mark DARJEELING, applied for on 7 March 2005 and registered on 31 March 2006 under No 4325718;
—
the earlier Community collective figurative mark reproduced below, applied for on 10 November 2009 and registered on 23 April 2010 under No 8674327:
The two Community collective marks cover goods in Class 30 corresponding to the following description: ‘Tea’.
The grounds relied on in support of the opposition were those referred to in Article 8(1) and (5) of Regulation No 207/2009.
In addition, as can be seen from the evidence produced by the applicant before the Board of Appeal, the word element ‘darjeeling’ — the word element shared by the signs at issue — is a protected geographical indication for tea, registered through Commission Implementing Regulation (EU) No 1050/2011 of 20 October 2011 entering a name in the register of protected designations of origin and protected geographical indications (Darjeeling (PGI)) (
OJ 2011 L 276, p. 5
) following an application received on 12 November 2007. That implementing regulation was adopted on the basis of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (
OJ 2006 L 93, p. 12
), since replaced by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (
OJ 2012 L 343, p. 1
).
On 10 July 2012, the Opposition Division rejected the opposition on the ground that, first, regarding the application of Article 8(1) of Regulation No 207/2009, the goods and services covered by the signs at issue were dissimilar and, second, regarding the application of Article 8(5) of that regulation, the evidence provided by the applicant was insufficient to establish that the earlier Community collective marks had a reputation with the relevant public.
On 10 August 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
By decision of 17 September 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and upheld the Opposition Division’s decision. In particular, it concluded that, in view of the lack of similarity between the goods and services covered by the signs at issue, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Similarly, it dismissed the alleged infringement of Article 8(5) of that regulation, on the ground that the evidence provided by the applicant was insufficient to establish that the conditions for applying that provision were met.
Forms of order sought
The applicant claims that the Court should:
—
annul the contested decision;
—
order OHIM to pay the costs.
OHIM contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
The intervener contends that the Court should:
—
uphold the contested decision;
—
order the applicant to pay the costs.
Law
1.
Admissibility of documents and evidence produced for the first time before the General Court
The applicant has produced before the Court two images, reproduced in the body of the application and representing the store front of one or more of the intervener’s retail outlets, two images, reproduced in the body of the application and used by the intervener for advertising purposes, several pages taken from a website entitled ‘Lingerie Stylist Blog’ (Annex 7) and several pages taken from a website entitled ‘TheStriversRow’ (Annex 8). Those items, as the applicant confirmed at the hearing, were not produced before the bodies of OHIM.
OHIM disputes both the admissibility of those images and annexes and their probative value. For its part, the intervener contends that the aforementioned items are irrelevant in the present case.
According to settled case-law, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted, since it is not the General Court’s function to review the facts in the light of evidence which has been adduced for the first time before it. Accordingly, the abovementioned items must be excluded, without it being necessary to assess their probative value (order of 7 February 2013 in
Majtczak
v
Feng Shen Technology and OHIM
, C‑266/12 P,
EU:C:2013:73
, paragraph 45; see also judgment of 24 November 2005 in
Sadas
v
OHIM — LTJ Diffusion (ARTHUR ET FELICIE)
, T‑346/04, ECR,
EU:T:2005:420
, paragraph 19 and the case-law cited).
2.
Substance
The applicant raises two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and the second alleging infringement of Article 8(5) of that regulation.
First plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
In its first plea in law, the applicant argues that the Board of Appeal wrongly ruled out a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 after finding that the goods and services covered by the signs at issue were entirely dissimilar. In particular, it accuses the Board of Appeal of having misjudged the extent of the protection conferred on Community collective marks falling under Article 66(2) of Regulation No 207/2009 by carrying out, in the present case, the same type of assessment as it would have used to ascertain whether there was a likelihood of confusion between two individual marks. In that regard, the applicant submits that the essential function of a collective mark such as the earlier trade marks in the present case is to guarantee that the goods or services covered by the mark concerned come from an undertaking located in the area of geographical origin indicated by that mark. According to the applicant, that function is clearly distinct from that of an individual mark, which is to guarantee to the consumer the commercial origin of the goods and services covered.
In essence, the applicant believes that, because of the specific function of collective marks falling under Article 66(2) of Regulation No 207/2009, the fact that the goods or services covered by the signs at issue may have the same geographical origin must be taken into account as a criterion in the context of an assessment of the similarity between them and as a decisive element in the global assessment of the likelihood of confusion. The applicant submits, in that regard, that in a situation such as the one in the present case, the risk that consumers may believe that the goods — or the raw materials for those goods — and services covered by the signs at issue have the same geographical origin constitutes a likelihood of confusion.
Accordingly, the reasoning put forward in the context of the first plea in law is divided into two parts. By the first part of that plea, the applicant argues, in essence, that the Board of Appeal erred in law in its application of Article 8(1)(b) of Regulation No 207/2009, in that it failed, when comparing the goods and services covered by the signs at issue, to take into account the actual or potential origin of those goods and services, thereby disregarding the specific function of collective marks protecting a geographical origin. By the second part of that plea, the applicant in essence accuses the Board of Appeal of having erred in law by failing, in its global assessment of the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009, to take into account the actual or potential geographical origin of the goods or services covered by the signs at issue and by thereby disregarding the specific function of collective marks falling under Article 66(2) of that regulation.
OHIM and the intervener dispute the applicant’s arguments.
Relevant public
According to case-law, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between two marks should not be assessed on the basis of a comparison of the signs in the abstract and the goods or services which they cover. The assessment of that risk must, instead, be based on the perception that the relevant public will have of those signs, goods and services (judgment of 24 May 2011 in
ancotel
v
OHIM — Acotel (ancotel
.), T‑408/09,
EU:T:2011:241
, paragraph 29).
More specifically, according to settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment in
ancotel
., cited in paragraph 24 above,
EU:T:2011:241
, paragraphs 37 and 38 and the case-law cited).
In the present case, given that the contested decision does not contain any specific analysis as regards the relevant public and the Board of Appeal has confined itself to upholding in its entirety the analysis carried out by the Opposition Division for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, reference should be made to the Opposition Division’s decision. It follows from case-law that, when the Board of Appeal confirms a lower-level decision of OHIM, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see judgment of 28 June 2011 in
ReValue Immobilienberatung
v
OHIM (ReValue)
, T‑487/09,
EU:T:2011:317
, paragraph 20 and the case-law cited).
According to the Opposition Division’s decision, the services in Class 35 are offered by professional companies operating in the fields of retailing, advertising, and management as well as other professional fields. Regarding the services in Class 38, the Opposition Division held that they were aimed at the public in the field of telecommunications.
Given that the Opposition Division did not carry out any specific analysis regarding the relevant public at whom the goods covered by the marks at issue are directed, it must be inferred that the Opposition Division implicitly held that the goods in question were targeted at the same public.
In that regard, it is apparent from the Opposition Division’s decision that that public, at whom both the goods covered by the mark applied for and the product covered by the earlier trade marks are directed, is the general public. In its assessment relating to the earlier trade marks’ reputation, the Opposition Division had to define the public targeted by those marks (see, to that effect, judgment of 6 February 2007 in
Aktieselskabet af 21. november 2001
v
OHIM — TDK Kabushiki Kaisha (TDK)
, T‑477/04, ECR,
EU:T:2007:35
, paragraph 48). Accordingly, the Opposition Division held that the evidence provided by the applicant did not indicate any recognition of the earlier trade marks on the part of the general public in the relevant territory, that is to say, the general public of the European Union.
Therefore, in so far as the Board of Appeal fully upheld the Opposition Division’s decision as regards the application of Article 8(1)(b) of Regulation No 207/2009, it must be inferred from the contested decision that the goods covered by the signs at issue target the same public, namely the general public. Moreover, the applicant endorses that approach when it argues that tea and clothing have the same consumers. Regarding the services in Classes 35 and 38 covered by the mark applied for, the Board of Appeal implicitly held, as is confirmed by OHIM in its response, that those services are generally directed at a public of professionals.
In that regard, it must be found that there is nothing allowing the findings confirmed by the Board of Appeal on that subject — which, in any event, are not contested by the parties to the dispute — to be called in question.
First part of the first plea
Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Furthermore, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion (see judgment of 9 June 2010 in
Muñoz Arraiza
v
OHIM — Consejo Regulador de la Denominación de Origen Calificada Rioja (RIOJAVINA)
, T‑138/09, ECR,
EU:T:2010:226
, paragraph 25 and the case-law cited).
It should also be noted that Article 66 of Regulation No 207/2009 provides for the possibility of registering Community collective marks. According to Article 66(1) of that regulation, ‘a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’ may constitute such a mark. That provision states that such marks may be applied for by ‘[a]ssociations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law’. Article 66(3) of Regulation No 207/2009 also states that the provisions of that regulation are to apply to Community collective marks, ‘unless Articles 67 to 74 [thereof] provide otherwise’.
Article 66(2) of Regulation No 207/2009 allows ‘signs or indications which may serve, in trade, to designate the geographical origin of the goods or services’ to be registered as Community collective marks within the meaning of Article 66(1) of that regulation, in derogation from Article 7(1)(c) thereof, pursuant to which trade marks consisting exclusively of such signs or indications are not to be registered.
It follows from case-law that, under the provisions of Article 8(1)(b) of Regulation No 207/2009, in conjunction with Article 66(3) of that regulation, a Community collective mark, like any other Community trade mark, enjoys protection against any infringement resulting from the registration of a Community trade mark that involves a likelihood of confusion (judgment in
RIOJAVINA
, cited in paragraph 32 above,
EU:T:2010:226
, paragraph 22).
As the Court of Justice and the General Court have pointed out on numerous occasions, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see order of 25 November 2010 in
Lufthansa AirPlus Servicekarten
v
OHIM
, C‑216/10 P,
EU:C:2010:719
, paragraph 26 and the case-law cited, and judgment of 5 December 2012 in
Consorzio vino Chianti Classico
v
OHIM — FFR (F.F.R
.), T‑143/11,
EU:T:2012:645
, paragraph 19 and the case-law cited).
According to settled case-law, in order to assess whether there is identity or similarity between the goods and services covered by the signs at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009, all the relevant factors relating to the link between those goods or services 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 are complementary (see judgments of 18 December 2008 in
Les Éditions Albert René
v
OHIM
, C‑16/06 P, ECR,
EU:C:2008:739
, paragraph 65 and the case-law cited, and 21 March 2013
Event
v
OHIM — CBT Comunicación Multimedia (eventer EVENT MANAGEMENT SYSTEMS)
, T‑353/11,
EU:T:2013:147
, paragraph 40 and the case-law cited). Other factors may also be taken into account, such as the distribution channels of the goods concerned, or the fact that the goods are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (see judgment of 18 June 2013 in
Otero González
v
OHIM — Apli-Agipa (APLI-AGIPA)
, T‑522/11,
EU:T:2013:325
, paragraph 32 and the case-law cited).
In the present case, the Opposition Division held that the goods in Class 25 covered by the mark applied for were not similar to tea (the only product covered by the earlier trade marks) by reason of their respective natures, their intended purposes, the channels used for their distribution and the network of distributors involved, together with the fact that those goods were neither complementary nor in competition with each other. It therefore concluded that there was no connection between those goods. It came to the same conclusion concerning the services in Classes 35 and 38 covered by the mark applied for. The Board of Appeal fully endorsed the findings of the Opposition Division. In that regard, it rejected the arguments put forward by the applicant based on the essential function of collective marks such as the earlier trade marks, which — according to the applicant — fell under Article 66(2) of Regulation No 207/2009.
Before the Court, the applicant, for the most part, bases its arguments on that ‘essential function’ of collective marks such as the earlier trade marks and submits that the goods and services covered by the signs at issue must be held to be similar simply because they could have the same geographical origin.
In that regard, it should be borne in mind that, as can be seen from recital 8 in the preamble to Regulation No 207/2009, the function of the protection afforded by a Community trade mark is in particular to guarantee the trade mark as an indication of origin. That is a summary of its essential function, which is to guarantee the identity of the origin of the product or service covered to the consumer or end user by enabling him, without any possibility of confusion, to distinguish that product or service from goods which have another origin (see judgment of 16 July 2009 in
American Clothing Associates
v
OHIM
and
OHIM
v
American Clothing Associates
, C‑202/08 P and C‑208/08 P, ECR,
EU:C:2009:477
, paragraph 40 and the case-law cited).
In the present case, it is not disputed that the word element ‘darjeeling’ may serve, in trade, to designate the geographical origin of the product covered by the earlier trade marks. That finding cannot be undermined by OHIM’s argument based on the possible perception of that word by part of the public, which would not recognise ‘darjeeling’ as a geographical name. However, while it is true — as the applicant rightly argues — that the essential function of a geographical indication is to guarantee to consumers the geographical origin of goods and the special qualities inherent in them (see, to that effect, judgment of 29 March 2011 in
Anheuser-Busch
v
Budějovický Budvar
, C‑96/09 P, ECR,
EU:C:2011:189
, paragraph 147), the same cannot be said of the essential function of a Community collective mark. The fact that the latter consists of an indication which may serve to designate the geographical origin of the goods covered does not affect the essential function of all collective marks as stated in Article 66(1) of Regulation No 207/2009, which is to distinguish the goods or services of the members of the association which is the proprietor of that mark from those of other associations or undertakings (see, to that effect, judgment in
RIOJAVINA
, cited in paragraph 32 above,
EU:T:2010:226
, paragraphs 26 and 27). Consequently, the function of a Community collective mark is not altered as a result of its registration under Article 66(2) of Regulation No 207/2009. More specifically, a Community collective mark is a sign allowing goods or services to be distinguished according to which association is the proprietor of the mark and not according to their geographical origin.
Although Article 66(2) of Regulation No 207/2009 introduces an exception to Article 7(1)(c) of that regulation by relaxing the conditions for registration and allowing marks describing the origin of the goods covered to be registered (see, to that effect, judgment of 13 June 2012 in
Organismos Kypriakis Galaktokomikis Viomichanias
v
OHIM — Garmo (HELLIM)
, T‑534/10, ECR,
EU:T:2012:292
, paragraph 51), that regulation is applicable, pursuant to Article 66(3) thereof, unless otherwise expressly provided, to all Community collective marks, including those registered under Article 66(2) thereof.
Consequently, since none of the provisions in the chapter of Regulation No 207/2009 dedicated to Community collective marks allows it to be inferred that the essential function of such marks, including those consisting of an indication which may serve to designate the geographical origin of the goods covered, is different from the essential function of Community individual marks, it must be held that the essential function of the former — as it is for the latter — is to distinguish the goods or services covered according to the specific body from which they originate and not according to their geographical origin.
The applicant is therefore wrong to maintain that a Community collective mark consisting of an indication which may serve to designate the geographical origin of the goods or services covered is not capable of distinguishing the goods or services of the members of the association which is the proprietor of that mark from those of other undertakings.
Pursuant to Article 67(2) of Regulation No 207/2009, an applicant for a Community collective mark is to submit regulations governing the use of the mark applied for, specifying the conditions of use of that mark, the persons authorised to use the mark, and the conditions of membership of the association applying for registration of that mark. In addition, under Article 71 of that regulation, the regulations governing the use of that mark may be amended by the proprietor of the Community collective mark. Thus, the conditions of membership of the association which is the proprietor of a Community collective mark are also, for marks falling under Article 66(2) of Regulation No 207/2009, restricted by the regulations governing the use of that mark. It is true that, under Article 67(2) of Regulation No 207/2009, mentioned above and cited by the applicant, the regulations governing use of a mark falling under Article 66(2) of that regulation must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark. However, Regulation No 207/2009 does not prevent an association which is the proprietor of a Community collective mark falling under Article 66(2) of that regulation from stating, in the regulations governing the use of that mark, that bodies or persons collaborating with bodies whose goods originate from the geographical area concerned or who use the goods of the association which is the proprietor of the mark as their raw materials may be members of that association and make use of the mark without being established in the area of geographical origin designated by that mark or having their goods originate directly from the geographical area concerned.
It follows from all of the foregoing that the function of Community collective marks falling under Article 66(2) of Regulation No 207/2009 consists of distinguishing the goods or services covered by those marks according to which body is the proprietor of the marks and not according to the geographical origin of those goods or services.
The applicant’s argument based on a judgment of the Bundesgerichtshof (German Federal Court of Justice), delivered on 30 November 1995 (Case I ZB 32/93, published in 1996, GRUR 270, 271 (
MADEIRA
)), in which that court found that a collective mark guarantees that the goods come from an undertaking which is located in the area of geographical origin and is entitled to use the collective mark, must be rejected. As can be seen from case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see, to that effect, judgment of 16 May 2007 in
Trek Bicycle
v
OHIM — Audi (ALLTREK)
, T‑158/05,
EU:T:2007:143
, paragraph 63).
Lastly, it should be noted that neither Article 7(1)(k) of Regulation No 207/2009, which establishes — subject to conditions — an absolute ground for refusing to register a sign as a Community trade mark where the sign in question contains or consists of a geographical indication protected under Regulation No 510/2006 (replaced by Regulation No 1151/2012), nor Article 164 thereof, which alludes, by reference to Article 14 of Regulation No 510/2006, to relations between marks applied for and geographical indications protected under that regulation, are relevant in the present case: in the course of the present dispute, the applicant did not rely before the bodies of OHIM on a geographical indication protected under Regulation No 510/2006, but filed a notice of opposition on the basis of (i) the Community collective marks cited in paragraph 6 above and (ii) the relative grounds for refusal referred to in Article 8(1)(b) and (5) of Regulation No 207/2009.
In the light of the foregoing, it must be found that, as OHIM and the intervener contend, where, in the context of opposition proceedings, the signs at issue are collective marks on the one hand and individual marks on the other, the comparison of the goods and services covered must be carried out using the same criteria as those which apply to an assessment of the similarity or identity of goods and services covered by two individual marks.
Accordingly, it is necessary to uphold the conclusion reached by the Board of Appeal in the present case, as set out in paragraph 38 above. It is well known that clothing and tea are not, as a general rule, produced by the same undertakings or marketed under the same brands. It cannot, therefore, be said that a clothing manufacturer will also operate in the field of harvesting or marketing tea. In other words, the relevant public will not presume that the goods covered by the signs at issue have the same commercial origin or that the same undertaking is responsible for the production of those goods (see, to that effect, judgment of 18 November 2014 in
Repsol
v
OHIM — Adell Argiles (ELECTROLINERA)
, T‑308/13,
EU:T:2014:965
, paragraph 38). Furthermore, it is obvious that the goods in question are not complementary, still less in competition with each other, and that they have different distribution channels.
In addition, in view of what has been set out in paragraphs 40 to 47 above, the applicant’s argument that the possibility that the public might believe that the goods and services covered by the signs at issue have the same geographical origin may constitute a criterion sufficient to establish their similarity or identity for the purposes of applying Article 8(1)(b) of Regulation No 207/2009 must be rejected.
Indeed, as OHIM argues, an extremely wide range of goods and services can be produced or rendered within the same geographical area. By the same token, there is nothing to prevent a region whose geographical name is registered as a Community collective mark under Article 66(2) of Regulation No 207/2009 from being the source of different raw materials which may be used to make various different products. In view of those findings, a broad interpretation of Article 66(2) of Regulation No 207/2009 such as the one suggested by the applicant would, as the intervener contends, amount to granting collective marks — registered in derogation from Article 7(1)(c) of Regulation No 207/2009 — absolute protection, irrespective of the goods covered by the signs at issue and thus contrary to the very wording of Article 8(1)(b) of that regulation.
The same applies in relation to the services in Classes 35 and 38. The mere possibility that the average consumer might believe that the services in question, namely the retail services offered under the trade mark DARJEELING, are connected with goods originating in the geographical area of the same name, or that the telecommunications services provided under the same trade mark are connected with, or will offer information about, that geographical area is not sufficient to establish a similarity between the services covered by the mark applied for and the product covered by the earlier trade marks.
It is also necessary to reject the applicant’s argument based on the graphical representation of the word element ‘darjeeling’ which is included in the mark applied for and the link which could be created between tea and the goods covered by the mark applied for by the fact that the dots on the letters ‘j’ and ‘i’ resemble tea leaves. Even assuming that those dots do indeed resemble leaves — and, more specifically, tea leaves — and that they create a link between tea and the goods covered by the mark applied for, that link is not sufficient to entail the similarity or identity of the goods or services covered by the signs at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009.
Second part of the first plea
By the second part of its first plea in law, the applicant in essence accuses the Board of Appeal of having failed, in its global assessment of the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009, to take into account the actual or potential geographical origin of the goods or services covered by the signs at issue.
Given that the argument put forward by the applicant in the first part of the first plea based on the similarity of the goods and services covered by the signs at issue has been rejected and that, accordingly, one of the two cumulative conditions listed in Article 8(1)(b) of Regulation No 207/2009 has not been met, it should be noted at the outset that the Board of Appeal was right to rule out its application in the present case.
It is true that, according to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular the similarity of the trade marks and the similarity of the goods or services covered by those marks. Thus, a lesser degree of similarity between the goods or services covered by the signs at issue may be offset by a greater degree of similarity between the marks, and vice versa (see orders of 27 April 2006 in
L’Oréal
v
OHIM
, C‑235/05 P,
EU:C:2006:271
, paragraph 35 and the case-law cited, and 2 October 2014
Przedsiębiorstwo Handlowe Medox Lepiarz
v
OHIM
, C‑91/14 P,
EU:C:2014:2261
, paragraph 23 and the case-law cited).
However, while any possible similarity between the signs at issue must be taken into account in the context of that global assessment, it does not, on its own, constitute a likelihood of confusion between those signs (see, by analogy, judgments of 29 September 1998 in
Canon
, C‑39/97, ECR,
EU:C:1998:442
, paragraph 22, and 16 October 2013
Mundipharma
v
OHIM — AFT Pharmaceuticals (Maxigesic)
, T‑328/12,
EU:T:2013:537
, paragraph 62). A certain degree of similarity, however minimal, must be established between the goods and services covered in order for the strong similarity or, as the case may be, the identity of the signs at issue to entail, in the light of the principle of the interdependence of factors, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. As it is, in the present case, as the Board of Appeal rightly found, the goods and services covered by the signs at issue are dissimilar.
In that regard, it should be borne in mind that, according to case-law, a collective mark cannot enjoy enhanced protection under Article 8(1)(b) of Regulation No 207/2009 if it is found, in the context of the global assessment of the likelihood of confusion, that the similarity between the goods and services is not sufficient to give rise to such a likelihood (see, by analogy, concerning the similarity of signs, judgment in
F.F.R
., cited in paragraph 36 above,
EU:T:2012:645
, paragraph 61). Accordingly, even in an assessment of the likelihood of confusion between Community collective marks and Community individual marks, the similarity of the signs at issue will not be capable, in the light of the principle of the interdependence of factors, of offsetting the lack of similarity between the product covered by the earlier trade marks and the goods and services covered by the mark applied for.
It is also necessary, in view of what has been set out in paragraphs 40 to 43 above concerning the essential function of collective marks falling under Article 66(2) of Regulation No 207/2009, to reject the applicant’s argument that, in the assessment of whether there is a likelihood of confusion between such Community collective marks and individual marks, the likelihood of confusion is the risk, not that the public might believe that the goods and services in question come from the same undertaking or, as the case may be, from economically linked undertakings, but that the public might believe that the goods — or the raw materials used to manufacture such goods — or services covered by the signs at issue may have the same geographical origin.
Furthermore, even assuming that the origin of the goods or services covered by the signs at issue may constitute one of the factors to be taken into account in the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, that provision is not applicable (as has been emphasised above) where, as in the present case, one of the cumulative conditions listed therein has not been met.
Moreover, the applicant’s argument based on the earlier trade marks’ supposedly high degree of distinctiveness cannot succeed. It is true that, according to settled case-law, the more distinctive the earlier trade mark, the greater the likelihood of confusion between the two signs at issue (judgments of 11 November 1997 in
SABEL
, C‑251/95, ECR,
EU:C:1997:528
, paragraph 24;
Canon
, cited in paragraph 58 above,
EU:C:1998:442
, paragraph 18; and 18 July 2013
Specsavers International Healthcare and Others
, C‑252/12, ECR,
EU:C:2013:497
, paragraph 36). However, even assuming that, in the present case, the earlier trade marks have acquired a high degree of distinctiveness, that fact cannot compensate for the total lack of similarity between the goods and services covered by the marks at issue.
Accordingly, the first plea in law must be rejected in its entirety.
Second plea in law: infringement of Article 8(5) of Regulation No 207/2009
By its second plea in law, the applicant argues that the Board of Appeal wrongly held that the conditions for applying Article 8(5) of Regulation No 207/2009 were not met in the present case.
It should be borne in mind that, under Article 8(5) of Regulation No 207/2009, ‘... upon opposition by the proprietor of an earlier trade mark within the meaning of [Article 8(2) of that regulation], 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’.
Although it is true that the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods and services for which it has been registered. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgments of 22 March 2007 in
Sigla
v
OHIM — Elleni Holding (VIPS)
, T‑215/03, ECR,
EU:T:2007:93
, paragraph 35, and 8 December 2011
Aktieselskabet af 21. november 2001
v
OHIM — Parfums Givenchy (only givenchy)
, T‑586/10,
EU:T:2011:722
, paragraph 58).
It follows from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to three conditions: first, the identity of or similarity between the marks at issue; secondly, the existence of a reputation of the earlier trade mark relied on in support of the opposition; and, thirdly, the existence of 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. Those conditions are cumulative, and failure to satisfy one of them is sufficient to render the provision inapplicable (see judgment of 12 November 2014 in
Volvo Trademark
v
OHIM — Hebei Aulion Heavy Industries (LOVOL)
, T‑525/11,
EU:T:2014:943
, paragraph 18 and the case-law cited).
In addition, Article 8(5) of Regulation No 207/2009 implies that the three types of injury referred to therein, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not confuse them (see judgment of 14 December 2012 in
Bimbo
v
OHIM — Grupo Bimbo (GRUPO BIMBO)
, T‑357/11,
EU:T:2012:696
, paragraph 29 and the case-law cited). The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see judgments of 25 May 2005 in
Spa Monopole
v
OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS)
, T‑67/04, ECR,
EU:T:2005:179
, paragraph 41 and the case-law cited, and 11 December 2014
Coca-Cola
v
OHIM — Mitico (Master)
, T‑480/12, ECR,
EU:T:2014:1062
, paragraph 26 and the case-law cited).
It is in the light of those preliminary considerations that the second plea in law relied on by the applicant must be examined.
Relevant public
It should be emphasised that the definition of the relevant public is a necessary prerequisite for the purposes of applying Article 8(5) of Regulation No 207/2009, just as it is for the purposes of applying Article 8(1) of that regulation. More specifically, it is with regard to that public that the similarity between the signs at issue, the possible reputation of the earlier trade mark and, lastly, the link between the signs at issue must be assessed.
Moreover, it should be borne in mind that the public to be taken into account for the purposes of assessing whether one of the injuries referred to in Article 8(5) of Regulation No 207/2009 exists will vary according to the type of injury alleged by the proprietor of the earlier mark. Thus, the relevant public with regard to whom the assessment of whether unfair advantage has been taken of the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services for which the later mark is requested (judgment of 12 March 2009 in
Antartica
v
OHIM
, C‑320/07 P,
EU:C:2009:146
, paragraphs 46 to 48). By contrast, the public with regard to whom the assessment of whether there is detriment to the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008 in
Intel Corporation
, C‑252/07, ECR,
EU:C:2008:655
, paragraph 35).
In view of the findings as regards defining the relevant public made in the context of the examination of the applicant’s first plea in law and the fact that the parties to the dispute do not challenge the contested decision on that point, it should be held that, first, so far as the product covered by the earlier trade marks is concerned, the relevant public consists of the general public of the European Union and, second, so far as the mark applied for is concerned, the relevant public for the goods in Class 25 is also the general consumer public of the European Union, whereas, for the services in Classes 35 and 38, the relevant public mainly consists of professionals in the relevant sectors.
Similarity of the signs at issue
In the present case, it is not disputed that, as the Board of Appeal rightly noted, the signs at issue are identical aurally and highly similar visually. The same applies in relation to the conceptual comparison of the signs at issue: the word element ‘darjeeling’ which is shared by those signs is simultaneously capable of referring to the Darjeeling type of tea and of designating the Indian region of the same name.
Reputation of the earlier trade marks
As a preliminary point, it should be borne in mind that Article 8(5) of Regulation No 207/2009 does not define ‘reputation’. However, it is clear from the case-law of the Court of Justice relating to the interpretation of Article 5(2) 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 substantive content of which is, in essence, identical to that of Article 8(5) of Regulation No 207/2009, that, in order to satisfy the requirement of reputation, the earlier trade mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark (judgment in
TDK
, cited in paragraph 29 above,
EU:T:2007:35
, paragraph 48).
It is true that the Court of Justice has held in that regard that a mark does not need to be known by a specific percentage of the relevant public in order to be regarded as having a reputation (see judgment in
TDK
, cited in paragraph 29 above,
EU:T:2007:35
, paragraph 49 and the case-law cited). However, in the context of the assessment of whether an earlier trade mark has a reputation within the meaning of Article 8(5) of Regulation No 207/2009, account must be taken of all the facts relevant to the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it (see judgment of 27 September 2012 in
El Corte Inglés
v
OHIM — Pucci International (Emidio Tucci)
, T‑373/09,
EU:T:2012:500
, paragraph 58 and the case-law cited).
As has been stated in paragraphs 33 and 34 above, indications which may serve, in trade, to designate the geographical origin of the goods or services covered, once registered as Community collective marks under Article 66(2) of Regulation No 207/2009 and in derogation from Article 7(1)(c) thereof, are to have the provisions of that regulation applied to them, as is the case for all Community collective marks. Consequently, any assessment concerning a Community trade mark falling under Article 66(2) of Regulation No 207/2009, including the assessment of whether it has a reputation within the meaning of Article 8(5) of that regulation, must be carried out using the same criteria as those applicable to individual marks.
In the present case, the Opposition Division rejected the opposition to the extent that it was based on Article 8(5) of Regulation No 207/2009, holding that, despite the demonstrated use of the earlier trade marks, the documents and other evidence produced by the applicant provided only scant information regarding the actual extent of that use and there were not sufficient indications as regards the degree of recognition of the earlier marks by the relevant public. More specifically, the Opposition Division held that the applicant had not provided sufficient indications concerning the volume of sales, the market share, or the extent of promotion of the earlier trade marks.
For its part, the Board of Appeal, while finding that the evidence put forward by the applicant did not make specific reference to the earlier trade marks, concluded that the Opposition Division ‘could have assumed that the reputation of Darjeeling as a [protected geographical indication] for tea [had] been transferred to the same sign protected as a collective trade mark for identical products, at least as far as the earlier word mark [was] concerned’. Next, it dismissed as irrelevant the assertion that the precise number of products bearing the earlier trade mark sold in the European Union was not specifically indicated, arguing that Darjeeling tea was ‘sold within the [European Union] and [enjoyed] reputation within the [European Union]’. Regarding, more specifically, the earlier figurative mark, the Board of Appeal stated that, ‘as the evidence submitted mainly [referred] to the word element Darjeeling’, the fact that the earlier figurative mark was used in the European Union ‘[was] not sufficient to conclude that it [enjoyed] reputation’. Lastly, before continuing its analysis for the purposes of applying Article 8(5) of Regulation No 207/2009, the Board of Appeal stated, in paragraph 24 of the contested decision, that, ‘[i]n any event, even if reputation of the earlier marks were proven, the other conditions of Article 8(5) [of Regulation No 207/2009] [were] not met’.
In view of what has been set out above, it must be found that, so far as the question whether the earlier trade marks have a reputation within the meaning of Article 8(5) of Regulation No 207/2009 is concerned, the wording of the contested decision is ambiguous to say the least: the only unambiguous sentence in that part of the contested decision is the one from paragraph 24 thereof cited in paragraph 78 above. It can be seen from that sentence that the Board of Appeal did not definitively conclude that the earlier trade marks had a reputation. When questioned on that point at the hearing, OHIM confirmed that there had been no definitive conclusion in that regard.
Nevertheless, given that the Board of Appeal continued its analysis for the purposes of applying Article 8(5) of Regulation No 207/2009, it must be held that that analysis was based on the hypothetical premiss that the reputation of the earlier trade marks had been established.
In that regard, it should be borne in mind that, while it is one of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009, the reputation of the earlier trade mark or marks and, in particular, the strength of that reputation is one of the factors to be taken into account in the assessment both of whether there is an association on the part of the public between the earlier trade marks and the mark applied for and of whether there is a risk that one of the three types of injury referred to in that provision may occur (see, by analogy, judgments in
Intel Corporation
, cited in paragraph 71 above,
EU:C:2008:655
, paragraph 42, and
Specsavers International Healthcare and Others
, cited in paragraph 62 above,
EU:C:2013:497
, paragraph 39 and the case-law cited).
It can be seen from that case-law that assessing whether the earlier trade mark or marks has or have a reputation is an essential step in examining whether Article 8(5) of Regulation No 207/2009 is applicable. Consequently, the application of that provision necessarily requires a definitive conclusion regarding whether or not such a reputation exists, which, in principle, means that no analysis regarding the possible application of that provision can be carried out on the basis of a vague hypothesis, that is to say, a hypothesis which is not based on the acknowledgement of a reputation with a specific level of strength.
However, it must be found that, in the present case, the Board of Appeal did not formulate any such vague hypothesis. Indeed, it follows directly from the wording of paragraph 24 of the contested decision, cited in paragraph 78 above, that the Board of Appeal relied on the hypothetical premiss that the earlier trade marks enjoyed a reputation with a very specific level of strength, namely, the level of strength corresponding to the level which the applicant was attempting to prove before the competent bodies of OHIM.
Before those bodies, the applicant was attempting to prove a reputation with an exceptionally high level of strength. It is notable, in that regard, that in its observations submitted in support of its notice of opposition, the applicant argued, submitting various pieces of evidence, that Darjeeling tea was considered to be the ‘Champagne of teas’ and that ‘DARJEELING [had enjoyed] an outstanding reputation [for] more than 150 years [as] tea [of the] highest quality’.
Accordingly, it must be held that the Board of Appeal relied, for the purposes of continuing its analysis, on the hypothetical premiss that the earlier trade marks had a reputation in the European Union and, what is more, had a reputation with an exceptionally high level of strength.
It therefore remains for the Court to examine the assessments carried out by the Board of Appeal on the basis of that hypothetical premiss for the purposes of applying Article 8(5) of Regulation No 207/2009, namely, the assessment of whether there is a link in the mind of the relevant public between the signs at issue and the assessment of whether one of the three risks referred to in that provision exists.
Whether there is a link in the mind of the public
According to case-law, the existence of a link between the mark applied for and the earlier mark must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include: the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, 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 (order of 30 April 2009 in
Japan Tobacco
v
OHIM
, C‑136/08 P,
EU:C:2009:282
, paragraph 26; judgments in
Intel Corporation
, cited in paragraph 71 above,
EU:C:2008:655
, paragraph 42, and 6 July 2012
Jackson International
v
OHIM — Royal Shakespeare (ROYAL SHAKESPEARE)
, T‑60/10,
EU:T:2012:348
, paragraph 21).
In the absence of such an association on the part of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see order in
Japan Tobacco
v
OHIM
, cited in paragraph 87 above,
EU:C:2009:282
, paragraph 27 and the case-law cited).
In the present case, although it is stated in the contested decision that the three types of injury referred to in Article 8(5) of Regulation No 207/2009 ‘are the consequence of a certain degree of similarity between the earlier and later mark, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them’, there is no specific analysis dedicated to the existence of such a link.
OHIM argues, in its response, that the Board of Appeal implicitly dismissed the existence of such a link. It refers, in that regard, to paragraphs 29 and 36 of the contested decision. In those paragraphs, the Board of Appeal held that, first, given the huge differences between the goods and services covered by the signs at issue, consumers would not expect there to be any relationship between tea producers and the intervener’s company, and, second, owing to the fact that the goods and services covered by the mark applied for were, commercially, entirely separate from the applicant’s goods, it was ‘improbable [that] the relevant public [would] construct a mental connection’ between the marks.
It should however be noted that, in view of the case-law cited in paragraph 88 above, if the Board of Appeal had indeed concluded that no link could be established between the signs at issue, that conclusion would have been sufficient to rule out the application of Article 8(5) of Regulation No 207/2009. However, the Board of Appeal continued its analysis in order to assess whether one of the three risks referred to in that provision existed.
Consequently, in view of the ambiguity which has been noted in the contested decision in that regard and the fact that, even so, the Board of Appeal continued its analysis, it must be held that, so far as the existence of a link within the meaning of the case-law cited above is concerned, the Board of Appeal adopted the same approach as it had done in relation to assessing whether or not the earlier trade marks had a reputation, that is to say, it continued its analysis without reaching any definitive conclusion as regards the existence of a link between the signs at issue, on the basis of the hypothetical premiss that such a link could be established.
Before proceeding to examine the contested decision as regards the last condition for applying Article 8(5) of Regulation No 207/2009, namely, the assessment of whether one of the three risks referred to in that provision exists, it is necessary to summarise the foregoing by recalling that the Board of Appeal continued its analysis for the purposes of applying that provision while relying on two hypothetical premisses: the first being that the earlier trade marks enjoyed a reputation the strength of which was that which the applicant had ascribed to them, namely, exceptional, and the second that it was possible that the relevant public might establish a link between the signs at issue.
Risks referred to in Article 8(5) of Regulation No 207/2009
As a preliminary point, it should be borne in mind that Article 8(5) of Regulation No 207/2009 refers to three separate types of risk, namely that the use without due cause of the mark applied for, first, is detrimental to the distinctive character of the earlier mark, secondly, is detrimental to the repute of the earlier mark or, thirdly, takes unfair advantage of the distinctive character or the repute of the earlier mark. Having regard to the wording of Article 8(5) of Regulation No 207/2009, the existence of one of the above types of risk is sufficient for that provision to apply (judgment in
VIPS
, cited in paragraph 66 above,
EU:T:2007:93
, paragraph 36).
As has been stated in paragraph 71 above, the existence of a risk that the injuries consisting of detriment to the distinctive character or the repute of the earlier mark may occur must be assessed by reference to average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. By contrast, the existence of the injury consisting of an unfair advantage being 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 the earlier mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services in respect of which registration of the later mark is sought, who are reasonably well informed and reasonably observant and circumspect.
Moreover, although the existence of a link between the signs at issue in the mind of the public constitutes a condition which is necessary for the application of Article 8(5) of Regulation No 207/2009, it is not sufficient in itself to establish the existence of one of the three risks referred to in that provision (see judgment in
ROYAL SHAKESPEARE
, cited in paragraph 87 above,
EU:T:2012:348
, paragraph 20 and the case-law cited). Thus, the existence of a link between the marks at issue does not free the proprietor of the earlier trade mark from its obligation to prove either actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009 or a serious likelihood that such an injury will occur in the future (see, by analogy, judgment in
Intel Corporation
, cited in paragraph 71 above,
EU:C:2008:655
, paragraph 71).
It follows from case-law that the purpose of Article 8(5) of Regulation No 207/2009 is not to prevent registration of any mark which is identical to a mark with a reputation or which displays points of similarity with that mark. The objective of that provision is, inter alia, to enable the proprietor of a national or Community mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark or to take unfair advantage of that repute or distinctive character. In that connection, it is necessary to clarify that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must however provide prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (see judgment in
VIPS
, cited in paragraph 66 above,
EU:T:2007:93
, paragraph 46 and the case-law cited). Such a conclusion 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 (judgments of 10 May 2012 in
Rubinstein and L’Oréal
v
OHIM
, C‑100/11 P, ECR,
EU:C:2012:285
, paragraph 95, and 9 April 2014
EI du Pont de Nemours
v
OHIM — Zueco Ruiz (ZYTeL)
, T‑288/12,
EU:T:2014:196
, paragraph 59).
It is in the light of those considerations that the Court must examine whether the Board of Appeal was right to conclude that none of the three risks referred to in Article 8(5) of Regulation No 207/2009 could be established in the present case.
– Detriment to the distinctive character of the earlier trade marks
Detriment to the distinctive character of a mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, is caused when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see judgment of 18 June 2009 in
L’Oréal and Others
, C‑487/07, ECR,
EU:C:2009:378
, paragraph 39 and the case-law cited).
According to case-law, proof that the use of the mark applied for is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or of a serious likelihood that such a change will occur in the future (see, to that effect, judgment of 14 November 2013 in
Environmental Manufacturing
v
OHIM
, C‑383/12 P, ECR,
EU:C:2013:741
, paragraph 34 and the case-law cited).
As has been emphasised by the Court of Justice, the concept of ‘change in the economic behaviour of the average consumer’ lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009 (judgment in
Environmental Manufacturing
v
OHIM
, cited in paragraph 100 above,
EU:C:2013:741
, paragraph 37).
Regulation No 207/2009 and case-law do not require the proprietor of the earlier trade mark to adduce evidence of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions (judgment in
Environmental Manufacturing
v
OHIM
, cited in paragraph 100 above,
EU:C:2013:741
, paragraph 42). None the less, such deductions must not be the result of mere suppositions but must be founded on an analysis of the probabilities which takes account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment in
Environmental Manufacturing
v
OHIM
, cited in paragraph 100 above,
EU:C:2013:741
, paragraph 43). It can be seen from the case-law of the Court of Justice that, when referring to that concept, that Court clearly indicated that it was necessary to demand a higher standard of proof in order to find detriment or the risk of detriment to the distinctive character of the earlier mark within the meaning of the provision mentioned above (judgment in
Environmental Manufacturing
v
OHIM
, cited in paragraph 100 above,
EU:C:2013:741
, paragraph 40).
In the present case, the Board of Appeal ruled out the risk of detriment to the distinctive character of the earlier trade marks, taking account of the fact that the goods and services covered by the mark applied for were entirely separate from the goods covered by the earlier trade marks and stating that the risk invoked by the applicant appeared to be entirely hypothetical. In addition, it noted that, since the term ‘darjeeling’ was a geographical name, the relevant public would not be surprised that it could be used in different market sectors by different undertakings, even though it is a protected geographical indication for tea.
The applicant cites the
Environmental Manufacturing
case-law cited in paragraph 100 above (
EU:C:2013:741
) and argues that there is at the very least a serious likelihood that a change in the economic behaviour of the average consumer will occur in the future. In that regard, it asserts that, since the goods covered by the mark applied for do not originate from the Darjeeling region (India), the average consumer will be confused not only as regards their origin, but also as regards the origin of the tea which is offered to him as Darjeeling tea. Thus, according to the applicant, the use of the mark applied for by the intervener will seriously jeopardise the reputation and the uniqueness of the geographical indication ‘Darjeeling’ and its ability to perform its essential function, namely, to guarantee to the consumer the geographical origin of the tea products which are offered to him under the Community collective marks.
OHIM and the intervener dispute the applicant’s arguments.
It must be found, as OHIM and the intervener have stated, that the applicant’s reasoning is not sufficient to establish a serious risk of detriment to the distinctive character of the earlier trade marks for the purposes of the recent case-law of the Court of Justice, which demands, as can be seen from paragraph 102 above, a higher standard of proof in order to find such a risk. More specifically, none of the arguments put forward by the applicant allows a serious likelihood of a change in the economic behaviour of the average consumer to be established, given the normal practice in the relevant commercial sectors in the present case.
Indeed, as stated in the contested decision and given the total lack of similarity between the goods and services covered by the signs at issue, the risk invoked by the applicant appears to be entirely hypothetical.
In that regard, it follows from case-law that the registration of earlier trade marks as collective marks cannot, per se, give rise to a presumption that those marks have average distinctive character (order of 21 March 2013 in
Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi
v
OHIM
, C‑393/12 P,
EU:C:2013:207
, paragraph 36, and judgment in
HELLIM
, cited in paragraph 42 above,
EU:T:2012:292
, paragraph 52).
Indeed, as is noted in the contested decision, the word element ‘darjeeling’ of which the earlier word mark is entirely composed and which is included in the earlier figurative mark, is a geographical name. Regardless of whether, as a result, that word element has a particularly distinctive character (see, by analogy, order in
Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi
v
OHIM
, cited in paragraph 108 above,
EU:C:2013:207
, paragraph 33), it should be borne in mind that the second sentence of Article 66(2) of Regulation No 207/2009 provides that a collective mark registered under that provision is not to entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters, and that, in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.
In the light of the foregoing, it must be found that, in the absence of evidence capable of establishing a serious likelihood of a change in the economic behaviour of the average consumer, the risk of injury to the distinctive character of the earlier trade marks cannot be established from the mere fact that the signs at issue are similar, especially since, in the present case, it is possible for the word element ‘darjeeling’ to be used for marks other than those earlier marks, as is clear from the second sentence of Article 66(2) of Regulation No 207/2009 (see, by analogy, judgment of 30 January 2008 in
Japan Tobacco
v
OHIM — Torrefacção Camelo (CAMELO)
, T‑128/06,
EU:T:2008:22
, paragraph 58 and the case-law cited). Consequently, the Board of Appeal was right to hold that the relevant public would not be surprised that the word element ‘darjeeling’ could be used in different market sectors by different undertakings and, accordingly, ruled out the existence of a likelihood of detriment to the distinctive character of the earlier trade marks. On that subject, the applicant’s argument that the average consumer is not used to the possibility of goods or services offered to him under the trade mark DARJEELING not having any link with Darjeeling must be rejected, since no evidence has been provided to substantiate that assertion.
What is more, as OHIM emphasises, there is a unique connection between the geographical name ‘Darjeeling’ and Darjeeling tea which does not exist between that name and the goods and services covered by the mark applied for. The applicant does not provide any evidence to establish that the geographical name in question is, in the mind of the relevant class of persons, currently associated with the goods or services covered by the mark applied for or that that name might be used by the undertakings concerned as an indication of the geographical origin of those goods or services (see, to that effect and by analogy, judgment of 4 May 1999 in
Windsurfing Chiemsee
, C‑108/97 and C‑109/97, ECR,
EU:C:1999:230
, paragraph 1 of the operative part; Opinion of Advocate General Cosmas in
Windsurfing Chiemsee
, C‑108/97 and C‑109/97, ECR,
EU:C:1998:198
, paragraphs 36 and 46; and judgment of 15 October 2003 in
Nordmilch
v
OHIM (OLDENBURGER)
, T‑295/01, ECR,
EU:T:2003:267
, paragraph 33). In that regard, the argument put forward by the applicant that India is a country where clothing is produced is not in itself sufficient to establish a specific connection of that kind. It is therefore unlikely that the relevant public will be led to believe that the goods and services covered by the mark applied for come from the Darjeeling region, still less to doubt, in finding that this is not the case, the origin of the goods covered by the earlier trade marks, which, according to the applicant, would entail a change in the economic behaviour of the average consumer for the purposes of the case-law cited in paragraph 100 above.
In any event, even assuming that, as the applicant claims, the earlier word mark has a strong distinctive character as a result of its supposedly exceptional reputation, the hypothetical premiss upon which, moreover, the contested decision is based (see paragraph 83 above), the applicant does not adduce any evidence to establish a serious likelihood of a change in the economic behaviour of the average consumer for the purposes of the case-law mentioned in paragraph 100 above.
Accordingly, the Board of Appeal’s finding that there was no risk of detriment to the distinctive character of the earlier trade marks must be upheld.
– Detriment to the repute of the earlier trade marks
Detriment to the repute of a mark, also referred to as ‘tarnishment’ or ‘degradation’, is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark (judgment in
L’Oréal and Others
, cited in paragraph 99 above,
EU:C:2009:378
, paragraph 40).
In the present case, the Board of Appeal held that the applicant had not put forward any argument regarding a possible detriment to the repute of the earlier marks and that the image generally conveyed by the clothing and services covered by the mark applied for was not negative.
In that regard, the applicant confines itself to alluding to alleged ‘parasitism’ on the part of the intervener which would jeopardise the power of attraction of the earlier trade mark as a geographical indication since it would no longer be capable of serving as a unique geographical indication for tea if goods and services other than tea were to be offered under the same brand. It also makes reference to the graphical representation of the mark applied for and, more specifically, the dots in the shape of tea leaves on the letters ‘j’ and ‘i’.
OHIM and the intervener dispute the applicant’s arguments.
It must be pointed out that the applicant does not put forward any specific argument to establish a serious likelihood that the use of the mark applied for could be detrimental to the repute of the earlier trade marks for the purposes of the case-law cited in paragraph 114 above. In that regard, it has not mentioned the characteristics or qualities of the goods or services covered by the mark applied for which would be liable to have a negative impact on the image of the earlier trade marks.
Moreover, as was noted by the Board of Appeal, none of the other evidence in the case-file establishes that the image generally conveyed by the goods and services covered by the mark applied for is negative. Nor — as OHIM emphasises in its response — is there any antagonism between the nature or the method of use of tea and the goods or services covered by the mark applied for which is such that the image of the earlier trade marks could be tarnished by the use of the mark applied for (see, to that effect, judgment in
CAMELO
, cited in paragraph 110 above,
EU:T:2008:22
, paragraph 62).
Furthermore, in view of what has been stated in paragraph 111 above, the unique connection between the geographical region of Darjeeling and the category of goods covered by the earlier trade marks and the absence of any such connection between that region and the goods and services covered by the mark applied for make a risk of a decrease in the earlier trade marks’ power of attraction more hypothetical.
Those findings are not undermined by the applicant’s argument based on the graphical representation of the letters ‘j’ and ‘i’ in the mark applied for. Even assuming that the dots appearing above those letters do indeed resemble leaves — and, more specifically, tea leaves — and that a link can be established between the signs at issue in the mind of the public, according to the case-law cited in paragraph 96 above that link is not sufficient in itself to establish the existence of one of the risks referred to in Article 8(5) of Regulation No 207/2009.
Therefore, it must be concluded that the Board of Appeal was right to hold that there was no risk that the use of the mark applied for would be detrimental to the repute of the earlier trade marks, even assuming that reputation, starting from the hypothetical premiss on which the contested decision is based, to be exceptional.
– Unfair advantage taken of the distinctive character or the repute of the earlier trade marks
The concept of ‘taking unfair advantage of the distinctive character or the repute of the earlier trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear riding on the coat-tails of the mark with a reputation (see, by analogy, judgment in
L’Oréal and Others
, cited in paragraph 99 above,
EU:C:2009:378
, paragraph 41). The unfair nature of the advantage taken in such circumstances is the result of the exploitation by that third party, without paying any financial compensation and without being required to make efforts of its own in that regard, of the marketing effort expended by the proprietor of the earlier trade mark in order to create and maintain that mark’s image (see judgment in
ROYAL SHAKESPEARE
, cited in paragraph 87 above,
EU:T:2012:348
, paragraph 56 and the case-law cited).
Pursuant to the case-law cited above and in contrast to the likelihood of confusion referred to in Article 8(1)(b) of Regulation No 207/2009, the risk that the use without due cause of the mark applied for would allow unfair advantage to be taken of the distinctive character or the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the origin of the goods or services covered by the marks at issue, is particularly attracted to the goods or services of the person applying for registration solely because they are covered by a mark which is identical or similar to the earlier mark with a reputation. This would require evidence of an association of the mark applied for with the positive qualities of the identical or similar earlier mark which could give rise to manifest exploitation or free-riding by the mark applied for (see judgment in
CAMELO
, cited in paragraph 110 above,
EU:T:2008:22
, paragraph 65 and the case-law cited).
In order to determine whether the use of the contested sign takes unfair advantage of the distinctive character or the repute of the earlier trade mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court of Justice has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it (see, by analogy, judgment in
Specsavers International Healthcare and Others
, cited in paragraph 62 above,
EU:C:2013:497
, paragraph 39 and the case-law cited). It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark (see judgments in
GRUPO BIMBO
, cited in paragraph 68 above,
EU:T:2012:696
, paragraph 43 and the case-law cited, and
ROYAL SHAKESPEARE
, cited in paragraph 87 above,
EU:T:2012:348
, paragraph 54 and the case-law cited).
In the present case, the Board of Appeal ruled out the likelihood that an unfair advantage would be taken of the distinctive character or the repute of the earlier trade marks by the mark applied for. It held that, in view of the total lack of similarity between the goods and services covered by the signs at issue, consumers would not expect there to be any relationship between tea producers and the company applying for registration, which offers clothing and clothing-related services. It concluded from this that the applicant had not shown why it would be advantageous for a mark relating to clothing to be associated with a mark known for high quality tea, given that, in the clothing sector, the image of luxury was dependent on conditions and factors which differed from those of the tea sector. Lastly, it was held that the same applied in relation to the services in Classes 35 and 38 covered by the mark applied for, which were not — according to the contested decision — specifically offered in relation to clothing.
The applicant claims there will be a transfer of the image projected by the geographical indication Darjeeling to the personal commercial interests of the intervener, who will benefit from: (i) the power of attraction of both that indication and the earlier collective marks; (ii) their reputation and prestige; and (iii) the radiant image projected by the DARJEELING brand.
In addition, the applicant maintains that there is no justification for the intervener’s use of the geographical indication ‘Darjeeling’ for goods or services which do not originate from the Darjeeling region and have no connection to that region. Lastly, it submits that the only reason a French company such as the intervener might be led to choose an Indian name like Darjeeling is because that name is famous and has a reputation in the European Union.
OHIM asserts that the applicant cannot prove that there is a risk of an unfair advantage as an automatic result of the use of the mark applied for, in view of the reputation of the earlier signs and the strong similarities between them. It contends that the applicant has not put forward any arguments capable of explaining how the image of the earlier trade mark could be transferred to the contested trade mark; nor has the applicant identified the specific positive qualities associated with that mark.
OHIM also contends that such a transfer of image is not foreseeable in the present case, since, as a result of the huge differences between the goods and services covered by the signs at issue, consumers will not expect there to be any relationship between tea producers and the intervener, while luxury is viewed differently in the two sectors concerned, namely, the clothing sector and the tea sector.
Lastly, OHIM contends that the applicant’s argument based on the intervener’s alleged intention to ride on the coat-tails of the earlier trade mark’s reputation proves nothing, since the intervener’s use of the word element ‘darjeeling’, which is a geographical name, is in principle legitimate.
For its part, the intervener contends, in essence, that (i) the Board of Appeal was right to base its reasoning regarding the lack of a serious risk of an unfair advantage being taken of the repute or the distinctive character of the earlier trade mark or marks on the huge differences between the goods and services covered in the present case, and (ii) none of the conditions of Article 8(5) of Regulation No 207/2009 have been met.
As a preliminary point, it should be noted that, as has been recalled in paragraph 123 above, according to settled case-law, the concept of ‘taking unfair advantage’ covers, in particular, cases where, by reason of a transfer of the image of the earlier trade mark or of the characteristics which it projects to the goods identified by the mark applied for, there is clear riding on the coat-tails of the mark with a reputation.
Moreover, according to case-law, it is possible, particularly in the case of an opposition based on a mark with an exceptionally strong reputation, that the probability of a future, non-hypothetical risk of unfair advantage being taken of that mark by the mark applied for is so obvious that the opposing party does not need to put forward and prove any other fact to that end. Accordingly, it is possible that an extremely strong reputation may, exceptionally, constitute in itself an indication of the future, non-hypothetical risk of the mark applied for as such taking unfair advantage in relation to each of the goods and services which are not similar to the goods and services in respect of which the earlier trade mark is registered (see judgment in
GRUPO BIMBO
, cited in paragraph 68 above,
EU:T:2012:696
, paragraph 43 and the case-law cited).
In the present case, the applicant has confined itself to mentioning the immediate connection which the public will make between the signs at issue by reason of the reputation of Darjeeling tea as reflected — in its view — at least in its word mark.
It must be pointed out that the characteristics normally associated with a mark with a reputation for tea cannot be considered in themselves to be such as to bring any advantage to a mark under which goods and services such as those covered by the mark applied for are marketed, especially since the goods and services in question are not likely to be consumed or used together (see, by analogy, judgment in
CAMELO
, cited in paragraph 110 above,
EU:T:2008:22
, paragraph 66).
In that regard, it should be borne in mind that, as has already been stated (see paragraphs 80 to 85 and 92 to 93 above), the Board of Appeal relied, when continuing with its analysis for the purposes of applying Article 8(5) of Regulation No 207/2009, on two hypothetical premisses pursuant to which (i) the earlier trade marks had an exceptional reputation and (ii) a link could be established between the signs at issue. Concerning, more specifically, the strength of the earlier trade marks’ reputation, the contested decision is based on the hypothetical premiss that all of the applicant’s assertions have been substantiated. According to those assertions, which the applicant is repeating, for the most part, before the Court, Darjeeling tea, the reputation of which is reflected in the earlier trade marks, is recognised as being a sophisticated tea of unique and exceptional quality.
As can be inferred from the case-law cited in paragraphs 66 and 125 above, since, for the purposes of applying Article 8(5) of Regulation No 207/2009, it is not necessary for the goods and services covered by the signs at issue to be similar, the finding that there are huge differences between the goods and services covered and that consumers will not expect there to be any relationship between tea producers and the company of the person applying for registration is not sufficient to exclude the risk of advantage being taken of the earlier trade marks’ reputation, which is, according to the hypothetical premiss on which the contested decision is based, exceptionally strong.
Where an earlier trade mark with an exceptional reputation is involved, even if the goods and services covered by the signs at issue are quite different, it is not altogether inconceivable that the relevant public could be led to transfer the values of that earlier mark to the goods or services covered by the mark applied for (see, to that effect, order of 14 May 2013 in
You-Q
v
OHIM
, C‑294/12 P,
EU:C:2013:300
, paragraph 69).
In the present case, first, the values conveyed by the element shared by the signs at issue — namely, the word element ‘darjeeling’, which refers to a tea marketed under the earlier trade marks, which have an exceptional reputation according to the hypothetical premiss on which the contested decision is based — are those of a sophisticated, exclusive, unique product. Second, given that the Board of Appeal’s analysis is based on the hypothetical premiss of an exceptional reputation, it is permissible to presume that a large part of the public concerned will be aware that the region of the same name from which that product originates is located in India. Thus, the word element ‘darjeeling’ is likely to evoke images of exoticism, sensuality and mystery which are connected, in the mind of the relevant public, with the representation of the Orient.
It should be noted that that conclusion does not contradict the conclusion concerning the detriment to the distinctive character of the earlier trade marks (see paragraph 111 above). Although, as regards the risk of detriment to the distinctive character of the earlier trade marks, the relevant public, that is to say, as has been stated in paragraph 95 above, the public at whom the earlier trade marks are directed, will not make any connection between the goods and services covered by the mark applied for and Darjeeling as a region of India, there is nothing to prevent the public at whom the mark applied for is directed from being attracted by the transfer to the mark applied for of the values and positive qualities connected with that region.
In the light of the foregoing and, in particular, of the fact that the hypothetical premiss on which the contested decision is based refers to a reputation of exceptional strength, the positive qualities evoked by the word element ‘darjeeling’ shared by the signs at issue are capable of being transferred to some of the goods and services covered by the mark applied for and, as a result, of strengthening the power of attraction of that mark.
So far as the goods in Class 25 which it covers are concerned, the mark applied for is capable of benefiting from the positive qualities conveyed by the earlier trade marks and, more specifically, the image of sophistication or exotic sensuality conveyed by the word element ‘darjeeling’. A risk of an unfair advantage cannot therefore be ruled out in the present case in respect of the goods in Class 25 covered by the mark applied for.
That finding also applies to the retail services in Class 35 covered by the mark applied for that are connected with the goods in Class 25 covered by that mark, namely, the retailing of women’s underwear and lingerie. It also applies, given the nature of the goods with which they are connected, to other retail services in Class 35 covered by the mark applied for, namely, the retailing of perfumes, toilet water and cosmetic lotions, household and bath linen, for the reasons set out above.
By contrast, the same cannot be said of the rest of the services in Class 35 nor of any of the services in Class 38 covered by the mark applied for. No reason why the use of the contested trade mark would confer a commercial advantage upon the intervener as regards services other than those mentioned in the preceding paragraph can be gleaned from the case-file, and the applicant does not submit any specific evidence capable of establishing a potential advantage of that kind. Thus, the Board of Appeal’s findings in that regard must be upheld.
Therefore, given that the contested decision is based on the hypothetical premiss of the earlier trade marks’ exceptional reputation, the contested decision must be annulled in part to the extent that the Board of Appeal ruled out the application of Article 8(5) of Regulation No 207/2009, excluding, as regards all the goods in Class 25 and the retail services in Class 35 covered by the mark applied for, the existence of a risk of an advantage resulting from the use without due cause of that mark.
Following that partial annulment, it will be for the Board of Appeal to re-examine the arguments which the applicant bases, in its appeal against the Opposition Division’s decision, on the existence of a risk of an unfair advantage being taken within the meaning of Article 8(5) of Regulation No 207/2009. As a first step, it will have to reach a definitive conclusion regarding whether the earlier trade marks have a reputation and, if so, how strong that reputation is.
If the Board of Appeal concludes, contrary to the hypothetical premiss on which the contested decision is based, that the reputation of none of the earlier trade marks is, ultimately, proved, it will have to rule out the application of Article 8(5) of Regulation No 207/2009, as one of the conditions for its application will not have been met, and will have to dismiss in its entirety the applicant’s appeal against the Opposition Division’s decision.
If the Board of Appeal reaches a definitive conclusion that, in the present case, a reputation less than the exceptional reputation constituting the hypothetical premiss on which the contested decision is based is proved in respect of at least one of the earlier trade marks, it will have to examine whether a link can be established in the mind of the public between the signs at issue and reach a definitive conclusion in that regard. If, in the context of that analysis, the Board of Appeal concludes that such a link cannot be established, it will have to rule out the application of Article 8(5) of Regulation No 207/2009, as another of the conditions for its application will not have been met. By contrast, if the Board of Appeal concludes that such a link can be established, it will then have to examine whether there is a risk of an advantage resulting from the use without due cause of the mark applied for.
Lastly, if the Board of Appeal concludes that an exceptionally strong reputation of at least one of the earlier marks has indeed been proved in the present case and that a link between the signs at issue can be established in the mind of the public, it will have to find, in compliance with this judgment, that, concerning the goods in Class 25 covered by the mark applied for and the ‘[r]etailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen’ services in Class 35 covered by that mark, there is a risk of an advantage resulting from the use without due cause of the mark applied for and will then have to examine, in order to reach a conclusion as regards the application of Article 8(5) of Regulation No 207/2009 in the present case, whether there is due cause for that use.
In that regard, it should be borne in mind that, since the Board of Appeal, first, did not reach a definitive conclusion as regards the reputation of the earlier trade marks, second, did not reach a definitive conclusion as regards the existence of a link between the signs at issue in the mind of the public and, lastly, having wrongly excluded the existence of a risk of an advantage resulting from the use of the mark applied for, did not examine whether there was due cause for that use for the purposes of Article 8(5) of Regulation No 207/2009, it is not for the Court to give a ruling for the first time, in its review of the legality of the contested decision, on those three questions (see, to that effect, judgment in
Master
, cited in paragraph 68 above,
EU:T:2014:1062
, paragraph 92 and the case-law cited).
In the light of all of the foregoing, the second plea in law must be upheld in part and it is necessary to annul the contested decision as regards the goods in Class 25 covered by the mark applied for and the ‘[r]etailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen’ services in Class 35 covered by that mark, and to dismiss the action as to the remainder.
Costs
Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. In the present case, the applicant, OHIM and the intervener have each succeeded on some of their heads of claim and failed on others. Consequently, each party must be ordered to bear its own costs.

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

1.
Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 17 September 2013 (Case R 1504/2012-2) as regards the goods in Class 25 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 the ‘[r]etailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen’ services in Class 35 of that agreement covered by the mark applied for;

2.
Dismisses the action as to the remainder;

3.
Orders each party to bear its own costs.

Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 2 October 2015.
[Signatures]
(
*1
)	Language of the case: English.