Judgment — ECLI:EU:T:2011:537
Date: 2011-09-27
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Spain

summary form, coherently and intelligibly in the application itself (see, to that effect, judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraphs 34 and 35). 25 It follows from the above considerations that the plea of inadmissibility raised by OHIM must be rejected. 26 As regards the merits of the applicant’s single plea, it should be recalled, in so far as, in support of his action against the contested decision, he relies on the decision of 14 May 2009, that the two decisions at issue both find a lack of similarity between the signs at issue, so that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. In particular, in the contested decision, the Board of Appeal arrived at that conclusion, at paragraphs 22 and 23, by rejecting the existence of a likelihood of confusion because the earlier signs and the mark applied for were not similar. 27 However, the two decisions draw different conclusions from that as regards the application Article 8(5) of Regulation No 40/94. According to the decision of 14 May 2009, the consequence of the lack of similarity between the marks at issue, found in the context of the application of Article 8(1) of Regulation No 40/94, is that one of the conditions for the application of Article 8(5) of Regulation No 40/94 is not fulfilled. By contrast, in recognising, at paragraph 36, a degree of visual similarity between the earlier mark and the mark applied for, the contested decision refrains from drawing the conclusions from the lack of similarity made in the context of the assessment of Article 8(1)(b) of Regulation No 40/94. 28 The applicant claims that the Board of Appeal erred in law by ignoring, for the application of Article 8(5) of Regulation No 40/94, the lack of similarity that it found in the context of its assessment of the application of Article 8(1)(b) of No Regulation 40/94. 29 In that regard, it should be recalled that the application of Article 8(5) of Regulation No 40/94 is subject to three conditions, namely, first, the identity of or similarity between the marks at issue if the mark applied for is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, secondly, the existence of a reputation of the earlier trade mark relied on in support of the opposition and, thirdly, the risk that 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, to that effect, Case T‑67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA‑FINDERS) [2005] ECR II‑1825, paragraph 30, and judgment of 27 November 2007 in Case T‑434/05 Gateway v OHIM – Fijitsu Siemens Computers (ACTIVITY Media Gateway), not published in the ECR, paragraph 57). 30 Accordingly, in order for the registration of the mark applied for to be refused for damage to the reputation of an earlier mark under Article 8(5) of Regulation No 40/94, the similarity between or identity of the two marks at issue is an essential condition. According to the case-law, when, in view of the application of Article 8(1)(b) of Regulation No 40/94, there is a lack of similarity between the mark applied for and the earlier mark, that lack of similarity also precludes the application of Article 8(5) of Regulation No 40/94 (see, to the effect, judgment of 11 December 2008 in Case C‑57/08 P Gateway v OHIM, not published in the ECR, paragraphs 62 to 64, and ACTIVITY Media Gateway, paragraphs 58 to 61). It follows that for the application of both Article 8(1)(b) of Regulation No 40/94 and for Article 8(5) of Regulation No 40/94, similarity between the earlier mark and the mark applied for is a necessary condition. 31 The concept of similarity between the marks at issue is the same in the case of a refusal to register a mark applied for because of a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation No 40/94, and of refusal because of damage to the reputation of an earlier mark, pursuant to Article 8(5) of Regulation No 40/94. Indeed, it follows from the case-law that in these two situations allowing registration to be refused for the mark applied for, the condition of similarity between the mark and the sign requires the existence, in particular, of elements of visual, aural or conceptual similarity, so that, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see ACTIVITY Media Gateway, paragraph 35, and the case-law cited, and see, by analogy, Case C‑408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I‑12537, paragraph 28, and the case-law cited). 32 In the light of that case-law, it must be concluded that the Board of Appeal assessed the similarity of the marks in a contradictory manner, by finding, at paragraph 23 of the contested decision, a lack of similarity between the mark applied for and the earlier mark when examining the conditions for the application of Article 8(1)(b) of Regulation No 40/94, and, at paragraph 36 of the contested decision, a sufficient degree of similarity between the same signs for the application of Article 8(5) of the same regulation, that last finding necessarily implying that there is similarity between the marks at issue. It therefore committed an error of law. 33 It follows from the foregoing that the single plea must be upheld and, given that similarity must be assessed in the same way under Article 8(5) and Article 8(1)(b) of Regulation No 40/94, the contested decision must be annulled in its entirety. Costs 34 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. As OHIM has been unsuccessful, inasmuch as the contested decision has been annulled, it must be ordered to bear its own costs in accordance with the form of order sought by the latter. 35 Under the third subparagraph of Article 87(4) of the Rules of Procedure, the Court may order an intervener to bear its own costs. Since the intervener has been unsuccessful, it must bear its own costs. On those grounds, THE GENERAL COURT (Second 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 25 February 2009 (Case R 554/2008-2); 2. Orders OHIM to bear its own costs and to pay those incurred by Mustapha El Jirari Bouzekri. Nike International shall pay its own costs. Forwood Dehousse Schwarcz Delivered in open court in Luxembourg on 27 September 2011. [Signatures] * Language of the case: English.