Judgment — ECLI:EU:T:2011:223
Date: 2011-05-18
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

summary fashion, the reasons why the evidence submitted during the proceedings before the Opposition Division did not make it possible for it to conclude that the earlier trade marks were highly distinctive by reason of an acquired reputation. 57 In that regard, it is apparent from the positions taken by OHIM and the applicant at the hearing that the Board of Appeal either did not examine or take into consideration the arguments and the documentary evidence put forward by the applicant, or that it tacitly accepted the findings of the Opposition Division in that regard, while failing to give any reasons for its decision to that effect. 58 Thus, the Board of Appeal may have committed either a breach of a legal rule, that is to say, Article 62(1) of Regulation No 40/94 (now Article 64(1) of Regulation No 207/2009) by not examining the arguments and documentary evidence concerning the reputation of the earlier trade marks, or an infringement of the obligation to state reasons laid down by Article 73 of that regulation (now Article 75 of Regulation No 207/2009), which constitutes an essential procedural requirement and must be distinguished from the question of whether the reasoning is well founded, which goes to the substantive legality of the contested decision (see, to that effect, Case C‑367/95 P Commission v Sytraval and Brink’s France [1998] ECR I‑1719, paragraph 67, and the judgment of 8 July 2009 in Case T‑33/06 Zenab v Commission, not published in the ECR, paragraph 76). 59 On the assumption that the Board of Appeal failed to address the question of the reputation of the earlier marks, it would not have complied with its obligation under Article 62(1) of Regulation No 40/94, and would therefore have committed a procedural error. However, in accordance with settled case-law, if, in the particular circumstances of the case, an error could not have had a decisive effect on the outcome, the argument based on such an error is nugatory and thus cannot suffice to justify annulment of contested decision (see Case T‑126/99 Graphischer Maschinenbau v Commission [2002] ECR II-2427, paragraph 49 and the case-law cited, and judgment of 12 September 2007 in Case T‑140/06 Philip Morris Products v OHIM (Shape of a cigarette packet), not published in the ECR, paragraph 72). 60 When examining consequently whether, in the absence of that error, the Board of Appeal’s decision would have been different, it is necessary to bear in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24). Marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20 and the case-law cited). 61 With regard to the distinctive character of the earlier marks by reason of their reputation, it is settled case-law that, since the reputation of a mark is largely a purely conjectural matter, it is for the parties to provide sufficient precision in their argument in order to enable OHIM to rule on their argument in a comprehensive manner. Second, the assessment of reputation is based, in principle, on matters of fact which it is for the parties to present. If the party bringing the opposition proceedings intends to rely on the fact that its mark is well known, it is required to put forward facts and, if necessary, evidence to enable OHIM to determine the truth of such a claim (Case T-66/03 ‘Drie Mollen sinds 1818’ v OHIM – Nabeiro Silveira (Galáxia) [2004] ECR II‑1765, paragraph 32, and Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraph 30). 62 As the applicant has not submitted to the Board of Appeal more factual information and evidence than it submitted to the Opposition Division, that is to say, a catalogue, the annual reports of the group to which the applicant belongs for 2002 and 2003, and extracts from a website, the Board of Appeal would have been unable to examine whether the earlier marks had a reputation on the basis of other factual information or evidence. The documents mentioned above are, however, clearly irrelevant for the purposes of establishing that reputation, since they show only that the mark McKINLEY has been used, without indicating the extent of use of the earlier marks or for how long they have been used, or for that matter the applicant’s market share. 63 Thus, the Board of Appeal would have been in a position only to confirm the Opposition Division’s assessment. On the assumption that the error consisted in the failure to examine the reputation of the earlier marks, that plea is therefore ineffective. 64 The same applies with regard to the issue whether the earlier marks have an inherent distinctive character. Being obliged, like the Opposition Division, to assess of its own motion whether the earlier marks have a high level of inherent distinctiveness, the Board of Appeal would also have been unable to make a different assessment to that of the Opposition Division. The Board of Appeal had only the same information at its disposal as the Opposition Division in order to examine whether such distinctiveness existed. Consequently, it did not commit any error in law in that regard. 65 With regard to the view that the Board of Appeal infringed its obligation to state reasons, it should be observed that the same principles as those applicable in the context of Article 253 EC also apply in the context of Article 73 of Regulation No 40/94 (Case T-168/04 L & D v OHIM – Sämann (Aire Limpio) [2006] ECR II‑2699, paragraphs 113 and 114). 66 However, since the annulment of the contested decision on the ground of failure to state reasons could give rise, in the present case, only to another substantially identical decision, the applicant has no legitimate interest in securing that annulment on such a ground (see, to that effect, Case T-95/06 Federación de Cooperativas Agrarias de la Comunidad Valenciana v CPVO – Nador Cott Protection (Nadorcott) [2008] ECR II‑31, paragraph 126 and case-law cited). 67 It follows from all of the foregoing that the Board of Appeal did not misapply Article 8(1)(b) of Regulation No 40/94 and that the sole plea in law must be rejected. 68 Accordingly, the action must be dismissed. Costs 69 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and the intervener have applied for costs and the applicant has been unsuccessful, the latter must be ordered to pay the costs. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders IIC-Intersport International Corp. GmbH to pay the costs. Forwood Moavero Milanesi Labucka Delivered in open court in Luxembourg on 18 May 2011. [Signatures] * Language of the case: English.