Judgment — ECLI:EU:T:2014:1062
Date: 2014-12-11
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful

Summary — Judgment of the General Court (Eighth Chamber), 11 December 2014 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 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)) 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Similarity of the marks concerned — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark Master — Figurative marks Coca-Cola and C (Council Regulation No 207/2009, Art. 8(5)) 4. 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 — 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 (Council Regulation No 207/2009, Art. 8(5)) 1. It is clear from the wording of Article 8(5) of Regulation No 207/2009 on the Community trade mark that the application of that provision is subject to the following conditions: first, that the marks at issue are identical or similar; secondly, that the earlier mark cited in opposition has a reputation; and, thirdly, that there is a risk that the use without due cause of the 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 that provision inapplicable. According to settled case-law, the types of injury referred to in Article 8(5) of Regulation No 207/2009 are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not necessarily confuse them. The existence of a link between the mark applied for and the earlier mark with a reputation, which must be assessed globally, account being taken of all factors relevant to the circumstances of the case, is therefore an essential precondition for the application of that provision. Those factors include, first, the degree of similarity between the signs at issue, second, the nature of the goods or services for which the signs at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, third, the strength of the earlier mark’s reputation, fourth, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use and, fifth, the existence of a likelihood of confusion on the part of the public. (see paras 25-27) 2. According to the case-law of the Court of Justice, the existence of a similarity between the marks at issue is a precondition for the application both of Article 8(1)(b) of Regulation No 207/2009 and of Article 8(5) of that regulation. That condition relating to similarity between the marks at issue requires the existence, in particular, of elements of visual, aural or conceptual similarity. It is true that those provisions differ in terms of the degree of similarity required: whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of such similarity between the marks at issue that there exists a likelihood of confusion between them on the part of the relevant section of the public, by contrast, for the protection conferred by Article 8(5) of that regulation, the existence of such a likelihood is not necessary. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them. Although the global assessment as to whether a link exists between the marks at issue for the purposes of Article 8(5) of Regulation No 207/2009 implies some interdependence between the relevant factors and, accordingly, a low degree of similarity between the marks may be offset by the strong distinctiveness of the earlier mark, the fact remains that, where there is no similarity between the marks at issue, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient grounds for finding that there is a likelihood of confusion between the marks at issue or that the relevant public will make a link between them. It is a necessary precondition for the application of both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 that the marks at issue be identical or similar. Consequently, those provisions are manifestly inapplicable where the General Court has ruled out any similarity between the marks at issue. It is only if there is some similarity, however faint, between the marks at issue that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public. It can be clearly seen from that case-law of the Court of Justice that the identical nature of the marks at issue or their similarity — however faint — is a precondition for the application of Article 8(5) of Regulation No 207/2009 and not merely a factor to be taken into consideration when assessing whether there is a link between those marks for the purposes of that provision. Furthermore, that conclusion stems directly from the following phrasing, used in the provision in question: ‘where [the mark applied for] is identical with, or similar to, the earlier trade mark’. (see paras 31-34) 3. See the text of the decision. (see paras 64, 65, 70, 74-76) 4. Unfair advantage has been taken of the distinctive character or the repute of the earlier mark where there is an attempt at clear exploitation and free-riding on the coat-tails of a famous mark and that taking unfair advantage of that distinctive character or repute is, therefore, behind the idea of ‘the risk of free-riding’. In other words, the risk of free-riding is the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods will be made easier by that association with the earlier mark with a reputation. The risk of free-riding is different from ‘the risk of dilution’ — the notion that detriment to the distinctive character of the earlier mark 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 — and ‘the risk of tarnishment’ — the notion that detriment to the repute of the earlier mark is usually established where the goods for which the mark applied for is used would appeal to the public’s senses in such a way that the earlier mark’s power of attraction would be diminished thereby. According to settled case-law, a finding of a risk of free-riding may, like a finding of a risk of dilution or a risk of tarnishment, be established, in particular, on the basis of logical deductions resulting from an analysis of the probabilities — so long as they are not mere suppositions — and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case. In particular, the Court of Justice has ruled that, in the general assessment intended to determine whether unfair advantage was being taken of the distinctive character or the repute of an earlier trade mark, it was necessary, in particular, to take account of the fact that the use of packaging and bottles similar to those of the fragrances that were being imitated was intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances were marketed. The Court also stated that, where a third party was attempting, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of the mark with a reputation in order to create and maintain the image of that mark, the advantage resulting from such use had to be considered to be an advantage that had been unfairly taken of the distinctive character or the repute of the earlier trade mark. However, that case-law in no way limits to the mark applied for the relevant evidence to be taken into consideration for the purposes of establishing a risk of free-riding (the risk that unfair advantage will be taken of the distinctive character or the repute of the earlier trade marks), but allows account also to be taken of any evidence intended to facilitate that analysis of the probabilities as regards the intentions of the proprietor of the trade mark applied for, and — a fortiori — any evidence relating to the actual commercial use of the mark applied for. (see paras 82-85, 88)