Judgment — ECLI:EU:T:2015:95
Date: 2015-02-12
Language of the case: English
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

Summary — Judgment of the General Court (Fifth Chamber), 12 February 2015 1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) 2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the products concerned — Complementary nature of the goods (Council Regulation No 207/2009, Art. 8(1)(b)) 3. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark B — Figurative mark representing two extended wings (Council Regulation No 207/2009, Art. 8(5)) 4. Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect 5. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Aim (Council Regulation No 207/2009, Art. 8(5)) 6. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Reputation of the mark in the Member State or in the Community — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) 1. See the text of the decision. (see paras 22-25) 2. In assessing the similarity between the goods at issue, all the relevant factors relating to those goods 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. Other factors may also be taken into account such as the distribution channels of the goods concerned. Complementary goods or services are those which are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods intended for different publics cannot be complementary. Furthermore, aesthetic complementarity between goods may give rise to a degree of similarity for the purposes of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark. Such aesthetic complementarity must involve a genuine aesthetic necessity, in the sense that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use those products together. That aesthetic complementarity is subjective and is determined by the habits and preferences of consumers, to which producers’ marketing strategies or even simple fashion trends may give rise. However, it is important to note that the mere existence of aesthetic complementarity between the goods is not sufficient to conclude that there is a similarity between them. For that, the consumers must consider it usual that the goods are sold under the same trade mark, which normally implies that a large number of the producers or distributors of the goods are the same. Although the search for a certain aesthetic harmony in clothing is a common feature of the entire fashion and clothing sector, it is, nevertheless, too general a factor to justify, by itself, a finding that goods such as jewellery and watches, on the one hand, and items of clothing, on the other, are complementary. (see paras 36, 58-60, 65) 3. In the absence of any similarity between the disputed goods, there is, for the general public, no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, between the figurative sign B, registration of which as a Community trade mark is applied for in respect of ‘Optical sunglasses’ and ‘Clothing and footwear’ in Classes 9 and 25 respectively of the Nice Arrangement, and the figurative mark representing two extended wings previously registered as an international trade mark producing its effects, inter alia, in Germany, Austria, Benelux, Bulgaria, Spain, Estonia, France, Greece, Hungary, Italy, Latvia, Lithuania, Portugal, the Czech Republic, Romania, Slovakia and Slovenia and covering, inter alia, goods in Class 14 corresponding to the following description: ‘Watches, watch movements, cases, faces and bands, watchmaking materials; chronometers; chronographs; apparatus for timing sports events; pendulum clocks, pendulettes and alarm clocks; all chronometric instruments, jewellery watches, jewellery; timing installations, time display devices and panels’. The lack of similarity of the goods at issue cannot be offset, in the context of the global assessment of the likelihood of confusion, by the fact that the disputed marks are similar or even identical, whatever the level of recognition of those marks by the relevant consumers may be. Moreover, the reputation of the earlier figurative mark, within the meaning of Article 8(5) of the said regulation, has not been demonstrated. In spite of the continuous quantitatively and qualitatively significant use of the composite mark consisting of the earlier mark and the word ‘longines’ over a period of time, it is the latter word which will attract the attention of consumers and will probably be retained by them and it has not been shown that a substantial part of the relevant public, in one or more of the Member States of the European Union in respect of which a reputation has been claimed, is also aware of the earlier mark in itself and associates it, without effort, with the applicant’s horological and chronometric goods to which the claim in respect of reputation relates. (see paras 84, 121) 4. National decisions on registrations in the Member States and, by analogy those cancelling or refusing registration, are only factors which may be taken into consideration, without being given decisive weight, in the registration of a Community trade mark. The same considerations apply to the case-law of the courts of the Member States. They are applicable in the context of absolute grounds for refusal and in the context of relative grounds for refusal of registration. (see para. 86) 5. The purpose of Article 8(5) of Regulation No 207/2009 is not to prevent registration of any mark which is identical with a mark with a reputation or similar to it. The objective of that provision is, notably, to enable the proprietor of an earlier national 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. Those same considerations apply, by analogy, pursuant to Article 8(2)(a)(iii) of the abovementioned regulation, read in conjunction with Article 8(5) thereof, to earlier trade marks with a reputation that are registered under international arrangements which have effect in a Member State of the European Union. (see para. 92) 6. In order to satisfy the requirement of reputation, a mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. There is, however, no requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory. (see para. 100)