Judgment — ECLI:EU:T:2015:76
Date: 2015-02-05
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful;Judgment delivered after back reference
Origin: United Kingdom

summary of the arguments advanced by the intervener in paragraph 30 of the contested decision was succinct, it must be held that the intervener has indeed substantiated its arguments such as to show a risk, which is not hypothetical, that use of the mark applied for could be detrimental to the earlier marks. 58 So far as concerns, second, the analysis of the substance of the arguments advanced by the intervener, it must be observed, first, that the Board of Appeal attached great importance, in paragraph 36 of the contested decision, to the highly distinctive character of the earlier signs, stating that the wolf’s head element had no clear link to the goods in question. There is no connection between the figurative element representing the wolf’s head used in the earlier marks and the goods sold by the intervener, since use of that element is explained, in essence, by the fact that the intervener’s company name contains the word ‘wolf’. 59 The Board of Appeal therefore correctly analysed the highly distinctive character of the earlier marks. In accordance with the case‑law, the stronger the earlier mark’s distinctive character and reputation the more likely it is that detriment will be caused to it (Intel Corporation, cited above in paragraph 27, paragraphs 67 and 74, and SPA-FINDERS, cited above in paragraph 26, paragraph 41). 60 In the second place, the Board of Appeal held, in paragraph 36 of the contested decision, that the identical or similar character of the goods in question should be taken into account. 61 In that regard, it must be borne in mind, first, that Article 8(5) of Regulation No 207/2009 may be relied on in support of an opposition lodged against not only an application for a Community trade mark covering goods and services which are not identical or not similar to those designated by the earlier mark but also as against an application for a Community trade mark covering goods which are identical or similar to those of the earlier mark (see, by analogy, Case C‑292/00 Davidoff [2003] ECR I‑389, paragraphs 24 to 26, and Adidas-Salomon and Adidas Benelux, cited above in paragraph 41, paragraphs 19 to 22). 62 It must be found, next, that the fact that competitors use somewhat similar signs for identical or similar goods compromises the immediate connection that the relevant public makes between the signs and the goods at issue, which is likely to undermine the earlier mark’s ability to identify the goods for which it is registered as coming from the proprietor of that mark. In the present case, it must therefore be held that use by the applicant of a canine’s head as a mark for garden and horticultural tools, identical or similar to those sold by the intervener under marks also representing a canine’s head, necessarily means that the consumers of those tools will no longer immediately associate the image of a canine with the intervener’s goods. 63 In that regard, it must also be borne in mind that the mark acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure and youth. To that effect, the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed, in particular, by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor (VIPS, cited above in paragraph 27, paragraph 35). 64 In the present case, the fact that the earlier marks no longer arouse immediate association with the goods for which it is registered and used would undermine the commercial efforts made by the intervener for the development of its marks. 65 In the third place, the Board of Appeal held, in paragraph 37 of the contested decision, that the applicant never stated a ‘due cause’ within the meaning of Article 8(5) of Regulation No 207/2009 to explain or justify using the canine’s head in the mark applied for. Those facts are not contested by the applicant. 66 Consequently, the Board of Appeal was fully entitled to find that the use of the mark applied for is likely to be detrimental to the distinctive character of the earlier marks. The applicant’s argument that it is necessary to show the economic effects of the connection between the marks at issue cannot therefore be upheld. 67 In so far as the Board of Appeal thus applied Article 8(5) of Regulation No 207/2009 correctly on account of the risk of dilution caused by the mark applied for, it is not necessary to consider the risk of free-riding on which the contested decision is also based. As stated in paragraph 27 above, just one of those three types of injury set out in Article 8(5) of Regulation No 207/2009 suffices for that provision to apply. 68 It follows from the above that the second plea in law must be rejected as unfounded. 69 The application must therefore be dismissed in its entirety. Costs 70 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and by the intervener. On those grounds, THE GENERAL COURT (Fourth Chamber) hereby: 1. Dismisses the action; 2. Orders Environmental Manufacturing LLP to pay the costs. Pelikánová Jürimäe Van der Woude Delivered in open court in Luxembourg on 22 May 2012. [Signatures] * Language of the case: English.