Judgment — ECLI:EU:T:2018:648
Date: 2018-10-04
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible

summary — albeit concise — must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any further information. In order to ensure legal certainty and the sound administration of justice, it is necessary — if an action or, more specifically, a plea in law, is to be admissible — that the basic legal and factual particulars relied on be indicated coherently and intelligibly in the application itself (see, to that effect, judgment of 15 September 2016, TAO-AFI and SFIE-PE v Parliament and Council, T‑456/14, EU:T:2016:493, paragraph 149). 60 Consequently, the General Court is obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which the head of claim is based are not indicated coherently and intelligibly in the application itself. The failure to state such matters in the application cannot be compensated for by putting them forward at the hearing (see, to that effect, judgments of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraph 37, and of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT VODKA), T‑450/13, not published, EU:T:2015:841, paragraph 17). 61 It must be held that the present plea in law is set out in an abstract and incomplete manner in the application. The applicant has failed in particular to state the case-law on which he relied or how the evidence was insufficient. In addition, at the hearing, the applicant partially withdrew and reformulated that plea. Since the arguments relating to that plea do not satisfy the minimum requirements of Article 177(1)(d) of the Rules of Procedure, it is inadmissible. The fourth plea in law, alleging that the Board of Appeal wrongly concluded that there was a likelihood of misrepresentation 62 By his fourth plea in law, the applicant submits that the Board of Appeal erred in refusing registration of the mark applied for in respect of a wider range of goods and services than was justified by the evidence. He claims that the evidence submitted on 9 September 2013 relates solely to live musical performances. The Board of Appeal erred in concluding that the protection of any goodwill in the name Deep Purple extended to the goods at issue, thereby acting as a bar to registration of the mark Deep Purple for those goods. In answer to a question from the Court at the hearing, the applicant stated that if the evidence filed out of time were to be held admissible, he maintained the present plea in law. 63 The applicant further submits that the goods at issue and the goods and services in respect of which the Board of Appeal found there to be goodwill are very dissimilar and that the threshold for showing that the use of the mark Deep Purple for the goods at issue would give rise to a likelihood of confusion on the part of a significant section of the public is, therefore, very high. The applicant states that the Board of Appeal was wrong to decide that the goodwill in the mark Deep Purple inevitably extended to the merchandise produced by rock bands. 64 Lastly, relying on the judgment of the High Court of Justice (England & Wales), Chancery Division (United Kingdom), Lyngstad v Anabas [1977] FSR 62, the applicant submits that there is a presumption that the public will not assume that the use of the image or name of a musical band indicates an economic connection with that band. In the applicant’s view, the onus was, therefore, on the intervener to show that the mark Deep Purple indicated an economic connection with the music band Deep Purple for a significant section of the public. 65 EUIPO and the intervener dispute most of those arguments. 66 It must be found, as EUIPO notes, that there is no difference of opinion between the applicant and the Board of Appeal concerning the test to be applied in order to establish that there is a likelihood of misrepresentation. According to the case-law on the tort of passing-off, it must be ascertained whether there is a genuine likelihood that the relevant public will be led to attribute the commercial origin of the goods and services to the opponent. Where the goodwill in a name has been established for some goods and services and that name is then used for other goods or services, the existence of a likelihood of misrepresentation will be all the more difficult to prove where those goods and services are different. While a defendant in an action for passing-off need not be engaged in a common field of activity, the existence of a common field of activity is a relevant fact in the analysis of alleged misrepresentation (see Wadlow, C., The law of passing-off, Sweet & Maxwell, London, 2016, pp. 314 to 317). 67 In addition, it must be stated that the Board of Appeal assessed the likelihood of misrepresentation concerning the goods at issue by taking into account evidence lodged by the applicant and the intervener. It found that that evidence showed that clothing merchandise generated a significant revenue stream for the intervener and that merchandising was an essential part of the business of a rock band on tour. It substantiated that finding by referring to (i) the Opinion of Advocate General Ruiz-Jarabo Colomer in Arsenal Football Club (C‑206/01, EU:C:2002:373), who, in point 81 thereof, observed that one of the sources of income which had increased in importance in recent years was, in fact, that derived from the sale of goods related to the team, an activity commonly known as ‘merchandising’, and to (ii) the judgment of the High Court of Justice (England & Wales), Chancery Division in Robyn Rihanna Fenty and Others v Arcadia Group Brands Limited [2013] EWHC 2310 (Ch), in which that court acknowledged the importance of merchandising in the music industry. Although there was no evidence concerning the sale by the intervener’s band of the articles in Class 9, the Board of Appeal decided that ‘sunglasses’ were sufficiently accessorised with clothing and that ‘mouse mats and mouse pads; mobile phone accessories’ were items commonly decorated with commercial or personal imagery, so that there would be misrepresentation if the applicant marketed that category of items under the name Deep Purple. 68 Given that the Board of Appeal relied, first, on the evidence concerning the merchandising of clothing which corresponded to the goods at issue in Class 25 and, secondly, on the evidence concerning the importance of merchandising and on the proof of matters of common knowledge, the applicant’s unsubstantiated claim that the goods at issue are very dissimilar is unfounded. The same is true of the argument that the Board of Appeal decided that goodwill in the mark Deep Purple inevitably extended to the merchandising of rock bands. 69 The applicant’s argument based on the judgment in Lyngstad cited in paragraph 64 above, in which an application for an interlocutory injunction based on the tort of passing-off by the music group Abba was dismissed, cannot succeed either. First of all, that judgment dates from 1977, a period when the concept of merchandising was less developed. It was observed in that case that ‘there was no evidence that it was the custom for popular musicians to grant licences to make and sell [articles bearing pictures of themselves]’. It was also held that ‘there is no question that the plaintiffs themselves [Abba] or indeed [in the court’s view] any company connected with them, have at any time marketed in this country any of the articles to which the notice of motion refers’. Those factors distinguished that case from the present case with regard to two important issues of fact. Next, it is incorrect to consider that the judgment in question establishes a presumption that the public will not assume that the use of the image or name of a musical band indicates an economic connection with that band. Lastly, it must be pointed out that the applicant does not assert that that judgment calls into question the test set out in paragraph 66 above. 70 At the hearing, the applicant relied principally on the judgment of the Court of Appeal (England & Wales) (Civil Division) (United Kingdom) in Robyn Rihanna Fenty and Others v Arcadia Group BrandsLimited [2015] EWCA Civ 3, concerning the action for passing-off brought by the singer Rihanna against Topshop, which had sold a T-shirt bearing the singer’s photograph without her authorisation. The applicant stated that that action had exceptionally been upheld for two reasons, namely, first, the fact that Rihanna had previously been publicly associated with Topshop in the context of a promotional campaign and, secondly, the fact that the singer’s image that was used was similar to an image used for the promotion of one of her albums (paragraphs 61 and 63 of the judgment in question). 71 In that regard, it must be found that, in the present case, the applicant was associated with Deep Purple — like Rihanna was with Topshop — because of the fact that until 1993 he was a member of the band. In addition, the mark applied for is identical to the earlier mark. To that extent, it is not, therefore, proven that an action for passing-off by the intervener would not succeed. 72 Accordingly, the fourth plea in law must be rejected as unfounded and, consequently, the action must be dismissed in its entirety. Costs 73 Under Article 134(1) of the Rules of Procedure, 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, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Eighth Chamber) hereby: 1. Dismisses the action; 2. Orders Mr Richard Hugh Blackmore to pay the costs. Collins Kancheva Barents Delivered in open court in Luxembourg on 4 October 2018. E. Coulon A. M. Collins Registrar President * Language of the case: English.