Judgment — ECLI:EU:T:2017:371
Date: 2017-05-31
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful

Summary — Judgment of the General Court (Second Chamber), 31 May 2017 1. EU trade mark — Definition and acquisition of the EU 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 — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark (Council Regulation No 207/2009, Art. 8(5)) 2. EU trade mark — Definition and acquisition of the EU 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 — Link between the marks — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) 3. EU trade mark — Definition and acquisition of the EU 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 — Protection also granted where a sign used for identical or similar goods or services (Council Regulation No 207/2009, Art. 8(5)) 4. EU trade mark — Definition and acquisition of the EU 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 — Figurative mark SOTTO IL SOLE ITALIANO SOTTO il SOLE — Word mark VIÑA SOL (Council Regulation No 207/2009, Art. 8(5)) 5. EU trade mark — Definition and acquisition of the EU 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 the EU — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) 1. For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must be satisfied. First, the earlier trade mark and the mark applied for must be identical or similar. Secondly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Thirdly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable. As regards the third of the conditions for applying Article 8(5) of Regulation No 207/2009, it must be borne in mind that detriment to the distinctive character of the earlier mark, a concept also referred to as ‘the risk of dilution’, is usually established where the use of the mark applied for would have the effect that the earlier mark would no longer be capable of arousing immediate association with the goods for which it is registered and used. (see paras 29, 30) 2. See the text of the decision. (see paras 31, 51, 52) 3. See the text of the decision. (see para. 33) 4. See the text of the decision. (see paras 34, 39, 41, 49, 68, 76-80) 5. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public which is relevant with regard to the goods or services covered by that trade mark. In examining that condition, all the relevant facts of the case must be taken into consideration, in particular the market share held by the earlier mark, how intensive, geographically widespread and long-standing use of the mark has been, and the amount invested by the undertaking in promoting the mark, but there is no requirement for that mark to be known by a specific 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. 44)