JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
28 April 2021 (*)
(EU trade mark – Invalidity proceedings – EU word mark FLÜGEL – Earlier national word marks … VERLEIHT FLÜGEL and RED BULL VERLEIHT FLÜÜÜGEL – Relative grounds for refusal – Damage to reputation – Article 8(5) and Article 52(1)(a) of Regulation No 40/94 (now Article 8(5) and Article 60(1)(a) of Regulation (EU) 2017/1001) – Right to be heard – Article 70(2) and Article 94(1) of Regulation 2017/1001)
In Case T‑509/19,
Asolo LTD, established in Limassol (Cyprus), represented by W. Pors and N. Dorenbosch, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Red Bull GmbH, established in Fuschl am See (Austria), represented by A. Renck and S. Petivlasova, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 15 May 2019 (Case
R 201/2019‑4), relating to invalidity proceedings between Red Bull and Asolo,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias and T. Perišin (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 16 July 2019,
having regard to the response of EUIPO lodged at the Court Registry on 17 October 2019,
having regard to the response of the intervener lodged at the Court Registry on 31 October 2019,
further to the hearing on 8 October 2020,
gives the following
Judgment
Background to the dispute
1        On 24 September 1997, International Licensing Services, one of the predecessors in title to the applicant, Asolo LTD, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign FLÜGEL.
3        The goods in respect of which registration was sought are in Classes 32 and 33 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for the preparation of drinks’;
–        Class 33: ‘Alcoholic drinks (except beers)’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 1998/45 of 22 June 1998 and the mark was registered on 1 February 1999.
5        On 7 September 2006, EUIPO recorded the transfer of the contested mark to the applicant.
6        On 5 December 2011, the intervener, Red Bull GmbH, filed an application for a declaration of invalidity on the basis of Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of that regulation (now Article 8(1)(b) and (5) of Regulation 2017/1001).
7        The application for a declaration of invalidity was based on the following earlier rights:
–        the word sign … VERLEIHT FLÜGEL, filed on 12 September 1997 and registered on 19 May 1998 as a trade mark in Austria under number 175793;
–        the word sign RED BULL VERLEIHT FLÜÜÜGEL, filed on 13 October 1995 and registered on 5 December 1995 as a trade mark in Austria under number 161298.
8        The two earlier national marks were registered for ‘energy drinks’ in Class 32.
9        For the purposes of proving the reputation of those marks, the intervener submitted, inter alia, the following evidence:
–        a survey concerning the actual likelihood of confusion between the contested mark and the earlier marks, carried out in October and November 2010;
–        an affidavit sworn by its General Counsel;
–        a survey concerning the reputation of the earlier mark …VERLEIHT FLÜGEL, carried out in October and November 1997;
–        a survey relating to the reputation of that mark, carried out in October 2010.
10      By decision of 2 December 2014, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 53(1), read in conjunction with Article 8(5) of Regulation No 207/2009. The Cancellation Division found that it was necessary, for reasons of procedural economy, to base its findings on the reputation of the earlier mark … VERLEIHT FLÜGEL.
11      On 29 January 2015, the applicant filed an appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against the decision of the Cancellation Division granting the application for a declaration of invalidity brought by the intervener.
12      By decision of 17 November 2016 (‘the decision of the Fifth Board of Appeal’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, it upheld the decision of the Cancellation Division to reject the applicant’s claim of acquiescence.
13      In the second place, contrary to the Cancellation Division, the Fifth Board of Appeal granted the application for a declaration of invalidity on the basis of Article 53(1), read in conjunction with Article 8(1)(b) of Regulation No 207/2009. The Fifth Board of Appeal considered that, for reasons of procedural economy, the application for a declaration of invalidity should be assessed on the basis of Article 8(1)(b) of Regulation No 207/2009. In that regard, in particular, it found, first, as regards the goods covered by the signs at issue, that the goods covered by the earlier mark were in part identical and in part similar to an average degree to the goods covered by the contested mark. More specifically, it found that, since ‘other non-alcoholic drinks’ included ‘energy drinks’, those goods were identical, and that ‘beers; mineral and aerated waters; fruit drinks and fruit juices’ and ‘syrups and other preparations for the preparation of drinks’ covered by the contested mark were similar to an average degree to the ‘energy drinks’ covered by the earlier mark. As regards, lastly, ‘alcoholic drinks (except beers)’, the Fifth Board of Appeal found that they had a certain connection with ‘energy drinks’. The same is true with regard to ‘alcoholic essences; alcoholic extracts; fruits extracts [alcoholic]’.
14      Second, as regards the comparison of the signs at issue, the Fifth Board of Appeal found that the signs were visually similar to an average degree, in that they share the same sequence of letters ‘f’, ‘l’, ‘ü’, ‘g’, ‘e’, ‘l’, phonetically similar to a certain degree, due to the common pronunciation of the word ‘flügel’ in both marks, and conceptually similar to an average degree, since both signs refer to the concept of ‘wings’.
15      Third, the Fifth Board of Appeal considered that the element ‘flügel’ was the dominant element of the earlier mark.
16      Fourth, it also considered that, for reasons of procedural economy, it was not necessary to examine evidence submitted to show that the earlier mark had enhanced distinctiveness and it based its analysis on the inherent distinctiveness of that mark.
17      On 8 March 2017, the applicant brought an action before the General Court for annulment of the decision of the Fifth Board of Appeal.
18      By judgment of 4 October 2018, Asolo v EUIPO – Red Bull (FLÜGEL) (T‑150/17, EU:T:2018:641), the Court held that the Fifth Board of Appeal had been right to uphold the decision of the Cancellation Division to reject the applicant’s claim of acquiescence.
19      The Court annulled the decision of the Fifth Board of Appeal in so far as it had found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the signs at issue as regards the goods ‘alcoholic
drinks (except beers)’ and ‘alcoholic essences; alcoholic extracts; fruit extracts [alcoholic]’ in
Class 33 covered by the contested mark and the goods ‘energy drinks’ in Class 32 covered by the earlier mark. The Court held, in particular, that the Fifth Board of Appeal had erred in finding that those goods were similar.
20      By decision of 29 March 2019, the Presidium of the Boards of Appeal referred the case back to the Fourth Board of Appeal (‘the Board of Appeal’) under reference
R 201/2019‑4 for it to rule on that case again.
21      Since the Court annulled the decision of the Fifth Board of Appeal in that it granted the application for a declaration of invalidity based on Article 8(1)(b) of Regulation No 207/2009 in respect of the goods ‘alcoholic drinks (except beers)’ and ‘alcoholic essences; alcoholic extracts; fruit extracts [alcoholic]’ in Class 33, the Board of Appeal was now called upon to rule on the intervener’s application for a declaration of invalidity based on Article 8(5) of Regulation No 207/2009.
22      By decision of 15 May 2019 (‘the contested decision’), the Board of Appeal of EUIPO dismissed the appeal. It examined the application for a declaration of invalidity under Article 8(5) of Regulation No 207/2009.
23      In the first place, the Board of Appeal found that the earlier mark enjoyed a substantial reputation already in 1997 for ‘energy drinks’ in Austria. According to that board, the survey carried out in October and November 1997 submitted by the intervener was sufficient to prove that reputation. Furthermore, it is apparent from the second survey submitted by the intervener, carried out in October 2010, that that reputation had been maintained over many years.
24      In the second place, the Board of Appeal confirmed the reasoning of the Fifth Board of Appeal that the signs at issue were visually and conceptually similar to an average degree and phonetically similar to a certain degree.
25      In the third place, it found that there was a link in the mind of the relevant public between the marks at issue. In that regard, it considered that (i) there was a certain degree of similarity between the signs at issue, (ii) there was a proximity between the goods in question, since alcoholic and non-alcoholic drinks were often mixed by the public and sold together in restaurants, bars and nightclubs, and (iii) the earlier mark enjoyed a substantial reputation in Austria and had inherent distinctiveness.
26      In the fourth place, according to the Board of Appeal, there was a high probability that the contested mark may take unfair advantage of the distinctive character or the repute of the earlier mark. In that regard, it found that, in view of the extent of the exposure of the relevant consumers to the earlier mark, the inherent degree of distinctiveness of that mark, the proximity of the goods and the similarity of the signs at issue, there was a high probability that the use without due cause of the contested mark for the goods in question
would result in unfair advantage being taken of the repute or the distinctive character
of the earlier mark.
27      Lastly, it found that the applicant had not established any due cause. In that regard, it noted that the applicant’s arguments seeking to establish the existence of such a cause concerned an international registration and not the mark contested
in the present case.
Forms of order sought
28      The applicant claims that the General Court should:
–        annul the contested decision;
–        dismiss the application for a declaration of invalidity;
–        order EUIPO and the intervener to pay the costs.
29      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
30      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including the costs incurred by the intervener.
Law
31      In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 70(2) and Article 94(1) of Regulation 2017/1001 and, second, infringement of Article 60(1)(a) of that regulation, read in conjunction with Article 8(5) thereof.
Admissibility of the action
32      As a preliminary point, the intervener submits that the action must be dismissed since the applicant based that action on the provisions of Regulation 2017/1001, which is not applicable in the present case.
33      In view of the filing date of the application for registration in question, namely 24 September 1997, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Moreover, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45
and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
34      As the intervener states, the applicant relied on the provisions of Regulation 2017/1001 and not, as regards the substantive provisions, on those of Regulation No 40/94.
35      In that regard, it is sufficient to recall that, according to the case-law, the Court must interpret an applicant’s pleas in terms of their substance rather than of their classification (see judgment of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 23 and the case-law cited). The relevant substantive provisions of those two regulations are, for the purposes of the present dispute, essentially identical.
36      Therefore, the pleas in law raised by the applicant must be regarded as alleging, first, infringement of Article 70(2) and Article 94(1) of Regulation 2017/1001 and, second, infringement of Article 52(1)(a), read in conjunction with Article 8(5) of Regulation No 40/94 and the plea of inadmissibility raised by the intervener must be rejected.
The first plea in law, alleging infringement of Article 70(2) and Article 94(1) of Regulation 2017/1001
37      By its first plea in law, the applicant claims that the Board of Appeal infringed Article 70(2) and Article 94(1) of Regulation 2017/1001 by refusing that further observations be submitted after the General Court referred the case back to it.
38      EUIPO and the intervener contest the applicant’s arguments.
39      In that regard, in the first place, it should be borne in mind that, under Article 70(2) of Regulation 2017/1001, the Board of Appeal, in the examination of the appeal, is to invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.
40      In the present case, the Board of Appeal invited the applicant to submit its observations on the renewal certificates for the two earlier marks produced by the defendant, which the applicant did not do. By contrast, it refused to grant the applicant’s request that the parties be allowed to submit further observations on the substance.
41      The applicant submits that that refusal is contrary to the Board of Appeal’s obligation to invite the parties, as often as necessary, to file their observations, in accordance with Article 70(2) of Regulation 2017/1001.
42      It maintains, in essence, that the Board of Appeal erred in finding that it was not necessary for the parties to reopen the written part of the procedure for two reasons. First, that board did not correctly follow the ratio decidendi of the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), in breach of Article 72(6) of Regulation 2017/1001, which could have been prevented by allowing the parties to submit observations on the effects of that judgment on the remainder of the proceedings. Second, extensive case-law, developed after the parties lodged their observations and concerning in particular the conceptual similarity and the perception of slogans, was not taken into account by the Board of Appeal.
43      In that regard, it should be noted, first, that it is apparent from the application that the alleged failure of the Board of Appeal to have regard to the ratio decidendi of the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), relates more specifically to the Board of Appeal’s assertion that there is a proximity between the goods in question. That finding was made in the context of the examination of Article 8(5) of Regulation No 207/2009, and more specifically of the existence of a link between the signs at issue.
44      It should be recalled that, in the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), the Court assessed exclusively the plea based on Article 8(1)(b) of Regulation No 207/2009
and did not, therefore, assess whether such a link existed. The applicant thus cannot criticise the Board of Appeal for having considered that it was not necessary to invite the parties to submit observations on that
point in order to take the measures necessary to comply with that judgment in accordance with Article 72(6) of Regulation 2017/1001.
45      Second, as regards the case-law which, according to the applicant, the Board of Appeal did not take into account, it must be stated that the applicant merely states in general terms that it is important case-law, developed after the parties had lodged their observations in 2015 and relating to conceptual similarity and the perception of slogans, without, however, specifying further which case-law is concerned, or
why further observations in that regard were necessary.
46      In that regard, it must be observed, as did EUIPO, that, in any event, in its application, the applicant makes no reference to any judgment, delivered during the relevant period, concerning the perception of slogans. It refers only to three judgments relating to conceptual similarity, namely the judgments of 27 June 2017, Deutsche Post v EUIPO – Media Logistik (PostModern) (T‑13/15, not published, EU:T:2017:434); of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO) (T‑350/13, EU:T:2017:633); and of 20 February 2018, Deutsche Post v EUIPO – bpost (BEPOST) (T‑118/16, not published, EU:T:2018:86). However, the applicant does not adduce any evidence to show that those judgments depart from the settled and earlier case-law of the EU judicature
in that field.
47      In those circumstances, the applicant cannot criticise the Board of Appeal for having found that it was not necessary to invite the parties to submit observations on the case-law on which it relies.
48      In the second place, as regards Article 94(1) of Regulation 2017/1001, it must be borne in mind that the second sentence of that provision constitutes a specific application of the general principle of protection of the rights of the defence, enshrined, moreover, in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union, according to which a person whose interests are affected by a decision of a public authority must be given the opportunity effectively to make his or her point of view known. The right to be heard extends to all the matters of fact or of law which form the basis for the decision-making act, but not to the final position which the administration intends to adopt (see, to that effect, judgment of 3 February 2017, Kessel medintim v EUIPO – Janssen-Cilag (Premeno), T‑509/15, not published, EU:T:2017:60, paragraph 22 and the case-law cited).
49      However, failure to comply with those provisions can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if it had been observed (see, to that effect, judgment of 3 February 2017, Premeno, T‑509/15, not published, EU:T:2017:60, paragraph 23 and the case-law cited).
50      Furthermore, the second sentence of Article 94(1) of Regulation 2017/1001 in no way requires that, following the resumption of the proceedings before EUIPO after the annulment of the decision of the Boards of Appeal by the General Court, the applicant again be invited to submit observations on points of law and fact on which it has already had ample opportunity to express its views in the course of the written procedure previously conducted, given that the file as then constituted has been taken over by the Board of Appeal (see, to that effect, judgment of 3 February 2017, Premeno, T‑509/15, not published, EU:T:2017:60, paragraph 26 and the case-law cited).
51      The applicant submits that the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), contains
reasons or evidence on which the Board of Appeal based its decision, without the parties having been given the opportunity to submit their observations on them, in breach of Article 94(1) of Regulation 2017/1001 and the right to be heard.
52      It must be stated, however, that the applicant has not specified in any way the
reasons or evidence relied on by the Court on which the Board of Appeal based its decision and on which the parties did not have the opportunity to submit their observations.
53      In the present case, it is common ground that, in the proceedings which led to the adoption of the decision of the Fifth Board of Appeal, the applicant had the opportunity to submit its observations relating to all the aspects of the proceedings in question. It is in no way apparent from the contested decision that the Fourth Board of Appeal relied, when it adopted that decision, on matters of law or of fact different from those available to the Fifth Board of Appeal when it adopted the decision of 17 November 2016 and on which the applicant had been able to submit its observations.
54      It follows that there is nothing in the file to suggest that, in the present case, the state of the file did not allow the Board of Appeal to rule on the application for a declaration of invalidity following the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), without having invited the applicant to submit its observations.
55      In those circumstances, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 52(1)(a), read in conjunction with Article 8(5) of Regulation No 40/94
56      By its second plea in law, the applicant submits that the Board of Appeal infringed Article 52(1)(a), read in conjunction with Article 8(5) of Regulation No 40/94. That plea is based, in essence, on five complaints seeking to contest the Board of Appeal’s findings relating to, first, the reputation of the earlier mark, second, the similarity of the signs, third, the link between the signs at issue, fourth, the unfair advantage gained from the use of the contested mark and, fifth, due cause for
the use of the contested mark.
57      Under Article 52(1)(a), read in conjunction with Article 8(5) of Regulation No 40/94, upon application by the proprietor of an earlier trade mark within the meaning of Article 8(2), a trade mark is to be declared invalid if it is identical with, or similar to, the earlier trade mark and if it is intended to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, it enjoys a reputation in the European Union and the use without due cause of the contested mark takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trade mark.
58      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 40/94, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, 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. Fourth, 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 (judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM – Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).
59      More specifically, the fourth of the conditions for the application of Article 8(5) of Regulation No 40/94 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or the repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
The first complaint, relating to the reputation of the earlier mark
60      The applicant claims that the Board of Appeal erred in finding that the earlier mark enjoyed a very substantial reputation. In that regard, it submits, first, that the surveys produced by the intervener contain serious methodological flaws and cannot therefore substantiate the reputation of the earlier mark. Second, the intervener did not provide any other evidence to substantiate such a reputation.
61      EUIPO and the intervener contest the applicant’s arguments.
62      As a preliminary point, it must be borne in mind that, in order to satisfy the requirement of reputation, a 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 (judgments of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM – Cheng (B), T‑505/12, EU:T:2015:95, paragraph 100, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 44).
63      However, the above list being merely illustrative, it cannot be required that proof of the reputation of a mark pertains to all those elements (judgment of 8 November 2017, Oakley v EUIPO – Xuebo Ye (Representation of a discontinuous ellipse), T‑754/16, not published, EU:T:2017:786, paragraph 101).
64      In the present case, in order to establish the reputation of the earlier mark, the intervener submitted, inter alia, two surveys concerning that reputation, carried out in 1997 and 2010, as well as an affidavit sworn by the intervener’s General Counsel.
65      In the first place, as regards the survey carried out in October and November 1997, the Board of Appeal found that it had adopted a reliable methodology, following a multi-step approach by means of relevant and open questions. It must be stated, in that regard, that the applicant does not call into question the fact that that survey was carried out by an independent and reputable company among a representative sample of persons in Austria, aged 15 or over, and that it provides details concerning, inter alia, the gender of the persons surveyed, the age group to which they belong and their place of residence, and that it also specifies the questions put to them.
66      As regards the questions of that survey, it should be noted, first of all, that, by its first question, the persons surveyed were asked whether they had already heard
or seen the expression ‘… verleiht Flügel’. It is already apparent from the answer to that question that 79% of all the persons surveyed
were aware of that expression and that that figure reaches 98% among regular energy-drinks consumers. It must be borne in mind that, in order to satisfy the requirement of reputation, a mark must be known by a significant part of the public which is relevant with regard to the goods or services covered by that mark (see judgment of 19 December 2019, Amigüitos pets life v EUIPO – Société des produits Nestlé (THE ONLY ONE by alphaspirit wild and perfect), T‑40/19, not published, EU:T:2019:890, paragraph 96 and the case-law cited). It cannot be considered that such was not the case in relation to the earlier mark in the present case. The applicants have not challenged the high percentages mentioned above or the methodology followed in the survey in question.
67      Contrary to what the applicant claims, that first question therefore enabled information to be obtained on whether the persons surveyed recognised the expression ‘…
verleiht Flügel’, even though it did not make it possible to ascertain whether those persons perceived that expression as a trade mark. In that regard, it is sufficient to note that the relationship between that mark and the earlier mark was the subject of the subsequent questions of the survey.
68      Next, in reply to the second question, 68% of the persons surveyed spontaneously associated the expression ‘…
verleiht Flügel’ with the mark Red Bull and that percentage reached 86% among the persons surveyed who had already heard
or seen that expression. In answer to the third question, by which the persons surveyed who had not associated that expression with the mark Red Bull were asked whether they had already seen or heard that expression in relation to soft drinks, 31% of those persons replied in the affirmative, which corresponds to 10% of all the persons surveyed. In answer to the fourth question, 53% of the persons who answered the third question in the affirmative stated that Red Bull was the beverage
trade mark that used that expression, which corresponds to 5% of all the persons surveyed. In reply to the fifth question, 66% of the persons surveyed stated that they had seen or heard
that expression for the first time one year or more previously.
69      The Board of Appeal was right to find that those high percentages proved the substantial reputation of the earlier mark among the Austrian public. In that regard, as regards the second to fifth questions of the survey, there is nothing to suggest that they are leading questions, contrary to what the applicant claims. Specific answers were not suggested by those questions and, in so far as the third and fourth questions relate to the segment of beverages covered by the earlier mark, namely soft drinks and therefore non-alcoholic drinks, they are indisputably relevant. Those findings are not invalidated by the fact, alleged by the applicant, that the intervener was the leader on the Austrian energy-drinks market.
70      Finally, it is apparent from the case-law that one of the criteria allowing the results of a survey to be recognised as having probative value consists in the survey being carried out in the objective circumstances in which the marks at issue are present, or may be present, on the market (judgment of 24 October 2018, Bayer v EUIPO – Uni-Pharma (SALOSPIR), T‑261/17, not published, EU:T:2018:710, paragraph 63).
71      The applicant merely states, without substantiating its assertions, that it is possible that, during the 1997 survey, the persons surveyed were presented with a card containing the colours, font and logo of the intervener and
that they could have been influenced by the other questions of the survey relating to other topics or by the place where it took place.
72      In that regard, it is sufficient to note that the applicant has not disputed that the survey concerned was carried out by an independent and reputable market-research company,
that it clearly mentions that the persons surveyed received a card featuring exclusively the words ‘… verleiht flügel’, and
that there is nothing to suggest that the circumstances referred to by the applicant as a mere possibility actually occurred.
73      In the second place, as regards the survey carried out in October 2010, the Board of Appeal found that that survey showed that the earlier mark had maintained a very substantial reputation for many years after 1997.
74      It is apparent from that survey that (i) 82% of all the persons surveyed and 98% of consumers of energy drinks were aware of the expression ‘… verleiht Flügel’ concerning that type of beverage,
(ii) 77% of all the persons surveyed and 95% of consumers of energy drinks thought of a specific undertaking when they heard or encountered that expression and
(iii) among those persons who thought of a specific undertaking when they heard or encountered that expression, 98% of all the persons surveyed and 100% of energy-drinks consumers thought of Red Bull. The survey concluded that those results clearly showed the reputation of the earlier mark.
75      In that regard, it must be noted that the reputation of an earlier mark must be established as at the filing date of the application for the contested mark (see, to that effect, judgment of 16 October 2018, VF International v EUIPO – Virmani (ANOKHI), T‑548/17, not published, EU:T:2018:686, paragraph 103 and the case-law cited). Documents bearing a date after that date cannot, however, be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. It cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (see judgment of 16 October 2018, ANOKHI, T‑548/17, not published, EU:T:2018:686, paragraph 104 and the case-law cited).
76      In the present case, it is not disputed that the survey carried out in October 2010 was carried out more than 13 years after the date of registration of the earlier mark and that the results of that survey merely make it possible to draw conclusions on the situation as it appeared several years after that date.
77      It follows that the survey carried out in October 2010, produced by the intervener, does not substantiate the reputation of the earlier mark at the date of registration.
78      In the third place, it is apparent from the file that, contrary to what the applicant claims, the intervener produced other evidence proving the reputation of the earlier mark.
79      The intervener produced, inter alia, an affidavit sworn by its General Counsel. The probative value of such a statement  is recognised by the case-law only if it is supported by other evidence (see judgment of 5 October 2020,
Laboratorios Ern v EUIPO – SBS Bilimsel Bio Çözümler (apiheal), T‑51/19, not published, under appeal, EU:T:2020:468, paragraph 110 and the case-law cited).
80      It is apparent from that affidavit that the intervener had already started using the slogan ‘… verleiht flügel’ for the marketing of its goods in Austria as from 1987 and that, as from that year, it made considerable investments in promoting its goods by using that slogan, in particular by means of advertisements broadcast on television, radio and in cinemas and by sponsoring sport and cultural events. Those assertions are supported by several annexes to that affidavit, such as, inter alia, Annexes 2 and 8, which contain detailed commercial information relating to the intervener’s goods.
81      In those circumstances, the Board of Appeal was right to find, in the light of the survey carried out in 1997 and the sworn affidavit produced by the intervener, that the earlier mark enjoyed a substantial reputation in September 1997.
82      It follows that the first complaint of the second plea must be rejected.
The second complaint, relating to the similarity of the signs
83      The applicant claims that the Board of Appeal erred in finding, by merely
upholding the decision of the Fifth Board of Appeal on that point, that the signs at issue were visually and conceptually similar to an average degree and phonetically similar to a certain degree.
84      EUIPO and the intervener contest the applicant’s arguments.
85      As a preliminary point, it is necessary to reject the intervener’s argument that the Court, in its judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), already made a definitive finding that the signs at issue are similar and that, consequently, the Board of Appeal could not depart from that finding and the applicant can no longer challenge it in the present proceedings.
86      In that regard, it is sufficient to note that, as is apparent from paragraph 73 of the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), the Court did not examine the question of the similarity of the signs at issue and ruled only on the question of the similarity of the goods covered by those signs. Moreover, the Board of Appeal did not, rightly, consider itself bound by that judgment on that issue
and, thus, in paragraph 47 of the contested decision, stated that there was no reason to depart from the reasoning set out in the decision of the Fifth Board of Appeal as regards the similarity of the signs in question, reasoning which it expressly
confirmed.
87      Concerning that point, it should be noted that the existence of a similarity between the earlier mark and the contested mark is a precondition for the application both of Article 8(1)(b) and 8(5) of Regulation No 40/94. That condition requires, in the context both of Article 8(1)(b) and of Article 8(5) of Regulation No 40/94, the existence, in particular, of elements of visual, phonetic 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 40/94 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Thus, 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 public concerned to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether it is carried out in the light of one or other of those provisions (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 to 54).
88      Furthermore, it must be borne in mind that two marks are similar when, from the point of view of the relevant public, they are at least partially identical in one or more relevant aspects. The global assessment of the link between the marks at issue must, so far as concerns the visual, phonetic or conceptual similarity of the signs, be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that link. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 13 July 2018, Cyprus v EUIPO – Papouis Dairies (Pallas Halloumi), T‑825/16, EU:T:2018:482, paragraph 27 and the case-law cited).
89      In the present case, the Board of Appeal merely confirmed the reasoning of the Fifth Board of Appeal that the signs at issue are visually and conceptually similar to an average degree and phonetically similar to a certain degree.
90      In the first place, as regards the visual similarity, the Fifth Board of Appeal found that the signs at issue coincided in the word element ‘flügel’, but that they differed in the additional element ‘verleiht’ and the three dots preceding it in the earlier sign, which had no counterpart in the contested mark.
91      Although it is true that the earlier mark differs from the mark applied for by the presence of an additional word element and three dots, the signs at issue nevertheless share the word ‘flügel’, with the result that the Board of Appeal rightly found that the signs at issue were visually similar to an average degree.
92      That finding is not called into question by the applicant’s mere assertion that it follows from the overall impression produced by the signs in question that the fact that the word ‘flügel’ is included at the end of the two signs at issue is not sufficient to make them visually similar.
93      In the second place, as regards phonetic similarity, the Fifth Board of Appeal found that the signs at issue coincided in the two syllables ‘flü’ and ‘gel’, but differed in the first two syllables of the earlier mark. It found that the three dots preceding the word ‘verleiht’ of the earlier mark will not be pronounced orally by the relevant public, that they were therefore not subject to a phonetic assessment and that they had no impact on the phonetic comparison of the marks at issue.
94      The applicant claims that the three dots of the earlier mark indicate to the public that something must be filled in and, consequently, that ‘red bull’ must be taken into consideration in the phonetic comparison. The earlier mark has never been used without being preceded by the group of words ‘red bull’. This leads to a clear phonetic dissimilarity.
95      That assertion, which, moreover, is not substantiated, must be rejected. According to the case-law, the comparison must be made between the signs as they were registered or as they appear in the application for registration (see judgment of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraph 66 and the case-law cited), regardless of whether they are used alone or together with other marks or indications (see, to that effect, judgment of 25 June 2020, Pavel v EUIPO – bugatti (B), T‑114/19, not published, EU:T:2020:286, paragraph 70).
96      Having regard to the undisputed fact that the signs at issue coincide in the two syllables ‘flü’ and ‘gel’, but differ in the first two syllables of the earlier mark, the Board of Appeal rightly found that there was a certain degree of phonetic similarity between the signs at issue.
97      In the third place, as regards conceptual similarity, the Board of Appeal found, first, that the earlier mark meant ‘… gives (you) wings’ in German and that the relevant public will perceive that expression as a metaphor referring to something meant to inspire or motivate someone to ‘fly’ or to achieve great things.
Second, according to the Board of Appeal, the contested mark means ‘wing(s)’ in German, namely a modified forelimb of a bird that bears large feathers and is used for flying. It concluded that, because the signs at issue shared the concept of the word ‘wing’, they were conceptually similar to an average degree.
98      According to the applicant, those findings are incorrect. It submits that the earlier mark does not refer to the concept of a wing, but consists of a metaphor according to which the drink Red Bull lifts you up. The intervener has always confirmed that metaphoric meaning in its advertising. By contrast, the applicant has never claimed that its drink would make consumers fly or suggested that it would make consumers more alert or energetic; its advertising strategy is, on the contrary, focused on the festive element.
99      In that regard, it is not disputed that the two signs at issue share the element ‘flügel’ – ‘wing(s)’ in German – which conveys the same idea, namely that the goods bearing the mark containing that element make it possible to ‘fly’. It is, moreover, as stated by the Board of Appeal, likely that the relevant public will perceive the reference to the word ‘wings’ as a metaphor and that the goods in question clearly cannot
‘make one fly’ in the literal meaning of the term, but in its figurative sense, namely making someone feel light, energetic or even happy and positive. None of the evidence put forward by the applicant can call those findings into question. On the contrary, the fact that its advertising is focused on the festive nature of its beverages, assuming that it may be taken into account in the present assessment, confirms that the signs at issue are capable of conveying the same idea. In those circumstances, the Board of Appeal was right to find that those signs had an average degree of conceptual similarity.
100    In the fourth place, it should be noted that the Board of Appeal did not rule on the existence of a dominant element in the earlier mark and that, in that regard, it did not confirm the assessment of the Fifth Board of Appeal. The applicant is therefore not entitled to challenge the contested decision on that point. In any event, it must be stated that, contrary to what the applicant claims, the Fifth Board of Appeal did not merely examine the allegedly dominant element of that mark, since it analysed the various components making up the earlier mark, as is apparent from paragraphs 90, 93 and 97 above.
101    In those circumstances, the second complaint of the second plea must be rejected.
The third complaint, relating to the link between the signs at issue
102    The applicant claims that the Board of Appeal did not carry out the required global assessment of the existence of a link between the marks at issue in the mind of the relevant public. The Board of Appeal disregarded the case-law according to which the clear conceptual dissimilarity between the signs counteracts any similarity between them and prevents the relevant public from establishing such a link. In addition, it erroneously found, while disregarding the ratio decidendi of the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), that there was proximity between the goods in question. Lastly, it did not take account, in its assessment of the perception of the relevant public, of the fact that the earlier mark was a slogan.
103    EUIPO and the intervener contest the applicant’s arguments.
104    As a preliminary point, it is clear from the case-law that the existence of a link between the marks at issue on the part of the relevant public must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include: the degree of similarity between the marks at issue; the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; its degree of distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 24 and the case-law cited).
105    In the present case, the Board of Appeal assessed whether there was such a link, taking into account the similarity of the signs, the proximity of the goods concerned, the substantial reputation of the earlier mark and its inherent distinctiveness. First of all, it found that the signs were visually and conceptually similar to an average degree and phonetically similar to a certain degree. Next, it noted that alcoholic and non-alcoholic drinks were often mixed by the public and sold together in restaurants, bars and nightclubs and, consequently, that there was a proximity of the goods in question, which belong to the same broad category of drinks. Lastly, it took account of the fact that the earlier mark enjoys a substantial reputation in Austria and has inherent distinctiveness.
106    The Board of Appeal’s assessment of the existence of a link between the marks at issue on the part of the relevant public is therefore consistent with the case-law cited in paragraph 103
above.
107    In the first place, it is necessary to reject the applicant’s argument that the clear conceptual dissimilarity between the signs counteracts any similarity between them and prevents the relevant public from establishing a link. In that regard, it is sufficient to note that the Board of Appeal was right to state that there is a similarity between the signs at issue, including conceptually (see paragraph 99 above).
108    In the second place, as regards the nature of the goods concerned, the Board of Appeal correctly confirmed, referring to the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), that the goods concerned by the marks at issue were dissimilar.
109    In paragraph 81 of the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), the Court held that it cannot be considered that an alcoholic drink and an energy drink are similar merely because they can be mixed, consumed or marketed together, given that the nature, intended purpose and use of those goods differ, based on the presence of, or absence of alcohol in their composition. In paragraph 83 of that judgment, it also noted that the relevant Austrian public was used to and aware of the distinction between alcoholic and non-alcoholic drinks and that that public would make that distinction when comparing the energy drink of the earlier mark and the alcoholic beverage of the contested mark.
110    However, those findings of the Court cannot in themselves imply that there is no proximity between the goods in question. In that regard, it should be noted that the Court made those findings in the context of the examination of the likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009, which presupposes that the goods or services which they cover are identical or similar.
111    It is common ground that, unlike that provision, Article 8(5) of Regulation No 40/94 expressly refers to the situation where the goods are not similar and that the dissimilarity between the goods designated respectively by the marks at issue is therefore not a sufficient factor for excluding the existence of a link between those marks (see judgment of 26 September 2018, PUMA, T‑62/16, EU:T:2018:604, paragraphs 99 and 100 and the case-law cited).
112    In the present case, first, it is common ground that a very large number of alcoholic and non-alcoholic drinks, such as energy drinks, are generally mixed or consumed together, either in the same establishments or as premixed alcoholic drinks (judgment of 4 October 2018, FLÜGEL, T‑150/17, EU:T:2018:641, paragraph 80). Furthermore, that finding cannot be called into question by the fact that the undertakings which market alcoholic drinks premixed with a non-alcoholic ingredient do not sell that ingredient separately and under the same or a similar mark as the premixed alcoholic drink at issue.
113    In that context, it should be noted that it is not disputed that the beverages covered by the earlier mark are frequently mixed with alcoholic drinks in the relevant market, especially by young members of the Austrian public.
114    Second, it is common knowledge that energy drinks and alcoholic drinks are sold in the same supermarkets and are often mentioned on menus of bars alongside each other. As regards matters of common knowledge, it is settled case-law that the bodies of EUIPO are not obliged to establish, in their decisions, the accuracy of such facts (see judgment of 21 September 2017, Novartis v EUIPO – Meda (Zimara), T‑238/15, not published, EU:T:2017:636, paragraph 123 and the case-law cited).
115    In those circumstances, the Board of Appeal was right to find, without disregarding the ratio decidendi of the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), that there is proximity between the goods in question.
116    In the third place, it is apparent from the case-law cited in paragraph 103 above that the degree of distinctiveness of the earlier mark is one of the relevant factors to be taken into consideration when assessing the existence of a link between the marks at issue on the part of the relevant public.
117    In the present case, the Board of Appeal took into account, among other relevant factors, the inherent distinctiveness of the earlier mark.
118    The applicant argues, first, that the earlier mark is a slogan and is therefore devoid of the distinctive character required to constitute a valid trade mark. Slogans are laudatory in nature and give information about the characteristics of the goods in question. Furthermore, the slogan in question has never been used without the distinctive mark Red Bull.
119    Second, the applicant claims that, if the distinctive character of the earlier mark is established, account should, in any event, be taken, for the purpose of assessing the existence of a link between the marks at issue in the mind of the relevant public, of the fact that that mark consists of a slogan. In that regard, it maintains that that slogan will be perceived by the public as a unit and that the meaning of that unit is different from the meaning of the words of which it is composed, which, considered in isolation, have no meaning. That factor is already sufficient to rule out a link between the marks at issue. More generally, if a single word of a slogan is used as a trade mark by a third party, the consumer will not establish any link with that slogan or with the company associated with that slogan.
120    In that regard, it should be noted, first of all, that the validity of a national mark, such as the earlier mark in the present case, cannot be called into question on account of the lack of distinctive character in proceedings for a declaration of invalidity of an EU trade mark, but only in proceedings for
a declaration of invalidity brought in the Member State concerned. The earlier mark must therefore be recognised as having a certain degree of distinctive character (see judgment of 7 October 2015, Panrico v OHIM – HDN Development (Krispy Kreme DOUGHNUTS), T‑534/13, not published, EU:T:2015:751, paragraph 65
and the case-law cited).
121    Next, it is apparent from the case-law that, as regards the assessment of the distinctive character of marks consisting of signs or indications which are also used as advertising slogans, it is not appropriate to apply to them criteria which are stricter than those applicable to other
signs
(see, to that effect, judgment of 26 October 2017, Hello Media Group v EUIPO – Hola (#hello digitalmente diferentes), T‑330/16, not published, EU:T:2017:762, paragraph 44 and the case-law cited).
122    It also follows from that case-law that such marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, and can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (see, to that effect, judgment of 26 October 2017, #hello digitalmente diferentes, T‑330/16, not published, EU:T:2017:762, paragraph 45 and the case-law cited).
123    In the present case, the Board of Appeal rightly found that the earlier mark was distinctive since the average consumer is aware that ‘humans have no wings and that there is no drink or any other treatment that would allow wings to grow’ and that that mark was therefore allusive.
124    Finally, even though the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will break it down into word elements which, for him or her, have a specific meaning or resemble words known to him or her (see judgment of 20 September 2019,
M. I. Industries v EUIPO – Natural Instinct (NATURE’S VARIETY INSTINCT), T‑288/18, not published, EU:T:2019:640,
paragraph 66 and the case-law cited).
125    Therefore, contrary to what the applicant claims, it cannot be ruled out that the consumer will establish a link between, on the one hand, a slogan and, on the other hand, a single word of that slogan which is used as a trade mark by a third party, as in the present case between the slogan ‘… verleiht flügel’ and the word ‘flügel’ covered by the contested mark.
126    In those circumstances, the Board of Appeal was correct in finding, in the light of all the relevant factors, that there was a link between the marks at issue on the part of the relevant public.
127    It follows that the third complaint of the second plea must be rejected.
The fourth complaint, relating to unfair advantage gained
from the use of the contested mark
128    The applicant claims that the Board of Appeal erred in finding that the use of the contested mark took unfair advantage of the repute of the earlier mark.
129    EUIPO and the intervener contest the applicant’s arguments.
130    In the first place, the applicant claims that the Board of Appeal did not carry out the global assessment required to reach the conclusion that the use of the contested mark took unfair advantage of the repute of the earlier mark.
131    In that regard, it must be borne in mind that, in order to establish whether, in a particular case, the use, without due cause, of the contested mark would take unfair advantage of the distinctive character or the repute of the earlier mark, it is appropriate to carry out a global assessment, taking into account all factors relevant to the circumstances of the case. Those factors include, inter alia, the strength of the reputation and the degree of distinctiveness of the earlier mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned (see judgment of 1 March 2018, Shoe Branding Europe v EUIPO – adidas (Position of two parallel stripes on a shoe), T‑85/16, not published, EU:T:2018:108, paragraphs 51 and 52 and the case-law cited).
132    In the present case, it must be stated that the Board of Appeal took account of all the relevant factors. First of all, it found that the earlier mark enjoyed not only inherent distinctiveness, but also a very substantial reputation for ‘energy drinks’ among the Austrian public. Next, it noted that, in view of the proximity between those beverages and the applicant’s goods, a substantial part of the relevant public may consume the latter, trusting that they were linked to the earlier mark, so that its
power of attraction and its advertising value are misappropriated. Lastly, it concluded that, taking into account the extent of the exposure of the relevant consumers to the earlier mark, the degree of inherent distinctiveness of that mark and the similarity of the signs at issue, there was a strong probability that use without due cause of the contested mark would lead to a situation of free-riding.
133    In the second place, the applicant submits that its predecessor had already filed a Benelux trade mark for its goods and an international registration for a figurative mark containing the name of the mark FLÜGEL in March 1996, thus prior to the application for registration of the earlier mark. According to the applicant, that chronology and the investments made by the applicant and its predecessor to establish a unique position on the alcoholic-drinks market under the contested mark show that there was no intent to ride on the coat-tails of the reputation of the earlier mark.
134    In that regard, first, as EUIPO and the intervener rightly point out, the absence of any intent on the part of the proprietor of the contested mark to free-ride, even if established, is not in itself sufficient to rule out the possibility of unfair advantage being gained from the use of that mark. It must be borne in mind that factors which are, by nature, subjective, such as the commercial intentions, real or supposed, of the proprietor of the contested mark do not have to be taken into account when assessing whether there is a risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, within the meaning of Article 8(5) of Regulation No 40/94 (see, to that effect, judgment of 3 May 2018, Gall Pharma v EUIPO – Pfizer (Styriagra), T‑662/16, not published, EU:T:2018:242, paragraph 73).
135    Second, it is common ground that the registrations relied on by the applicant (see paragraph 133
above) concern marks other than the contested mark in the present case. The application for registration of the contested mark was filed on 24 September 1997, that is to say, after the filing date of the earlier mark,
on 12 September 1997.
136    Furthermore, it is apparent from the file, in particular from the affidavit provided by the intervener, that the intervener had already started using the sign … VERLEIHT FLÜGEL
from 1987 onwards on the relevant market, which the applicant has not disputed.
137    It follows that, contrary to what is claimed by the applicant, the chronology of the registrations which it referred to and the investments made to establish a position on the alcoholic-drinks market under the contested mark are not capable of demonstrating
that there was no unfair advantage taken of the distinctive character or the repute of the earlier mark.
138    In the third place, the applicant claims that there was no transfer of the image of the
mark with a reputation or the characteristics which it projects to the goods covered by the contested mark. It is clear that the image of the earlier mark, namely the idea of making consumers more alert, cannot be used to market an alcoholic drink such as that covered by the contested mark. The applicant adds that it did nothing to create a link with the success of the earlier mark, which is confirmed by the use of the marks at issue in practice.
139    In that regard, it must be recalled that, according to the case-law, the concept of taking unfair advantage of the distinctive character or the repute of the earlier mark – also called ‘parasitism’ or ‘free-riding’ – pertains to the advantage taken of the use of the identical or similar contested mark. It covers, in particular, cases where, by reason of a transfer of the image of the mark with a reputation or of the characteristics which it projects to the goods identified by the contested mark, there is clear riding on the coat-tails of the mark with a reputation (see judgment of 1 March 2018, Position of two parallel stripes on a shoe, T‑85/16, not published, EU:T:2018:109, paragraph 48 and the case-law cited).
140    Thus, where a third party attempts, through the use of a mark 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 or her own in that regard, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark (see judgment of 1 March 2018, Position of two parallel stripes on a shoe,
T‑85/16, not published, EU:T:2018:109, paragraph 49 and the case-law cited).
141    The existence of injury consisting of unfair advantage taken of the distinctive character or the repute
of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).
142    In the present case, the Board of Appeal rightly found that, in view of the proximity of the goods in question and the repute and distinctive character of the earlier mark, a significant proportion of consumers may consume the applicant’s goods
trusting that they were linked to the earlier mark, so that its power of attraction and its advertising value are misappropriated.
143    Furthermore, it is apparent from the file, first, that, when the applicant’s predecessor adopted the name FLÜGEL, it was based on the practically identical term ‘flügerl’, which has been used in Austria since the end of the 1980s to designate a beverage consisting of a mixture of Red Bull, the intervener’s product, and red vodka, which the applicant acknowledged at the hearing. Second, the applicant’s figurative mark, as registered in 1996, included the expression ‘vodka energy’ and, until 2006, the drink sold by the applicant under the contested mark contained essential components of energy drinks,
which the applicant also acknowledged at the hearing.
144    In those circumstances, it is necessary to reject the applicant’s claims that it did nothing to create a link with the success of the earlier mark and that there has been no transfer of the image of the mark with a reputation or of the characteristics which it projects to the goods covered by the contested mark.
145    In the fourth place, according to the applicant, the Board of Appeal did not take into account the fact that the highest Austrian courts had already held that the contested mark did not take unfair advantage of the earlier mark, namely in the judgment of the Oberlandesgericht Wien (Higher Regional Court, Vienna, Austria) of 25 March 2012 in Case 3R 97/11y, upheld by the judgment of the Oberster Gerichtshof (Supreme Court, Austria) of 18 September 2012.
146    In that regard, it must be stated, first, that those judgments do not concern the contested mark, but another mark, namely a figurative mark of the applicant, registered in 1996.
147    Second, it should be recalled that, according to the case-law, the EU trade-mark regime is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system. Neither the Board of Appeal nor, as the case may be, the EU judicature are therefore bound by – even if they may take them into consideration – decisions adopted in a Member State
(see judgment of 14 May 2019, Zweirad-Center Stadler v EUIPO – Triumph Designs (Triumph), T‑12/18, not published, EU:T:2019:328, paragraph 70 and the case-law cited).
148    In the fifth place, the applicant claims that the Board of Appeal wrongly took into account an unreliable survey carried out in October and November 2010, and therefore several years after the filing date of the contested mark.
149    In that regard, while it is true that the Board of Appeal found that that survey confirmed the existence of an unfair advantage, the fact remains that it expressly observed that that survey was not the decisive factor for establishing such an existence.
150    In the sixth place, contrary to what the applicant claims, the intervener was not required to provide evidence of actual and present injury to the earlier mark. It follows from the case-law that, in order to benefit from the protection introduced by Article 8(5) of Regulation No 40/94, the proprietor of the earlier mark is not required to demonstrate that the type of damage to its mark that is referred to in that provision is actual and present (see judgment of 3 May 2018, Styriagra, T‑662/16, not published, EU:T:2018:242, paragraph 64 and the case-law cited).
151    When it is foreseeable that such injury will ensue from the use which the proprietor of the mark applied for may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for this actually to occur in order to be able to prohibit that use.
The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see judgment of 3 May 2018, Styriagra, T‑662/16, not published, EU:T:2018:242, paragraph 64 and the case-law cited). In the present case, contrary to what the applicant claims, the Board of Appeal correctly stated that such a conclusion could be drawn, inter alia, on the basis of logical deductions resulting from an analysis of the probabilities and by taking account of the normal practices in the relevant commercial sector and all the other circumstances of the case.
152    In that regard, the fact that the intervener did not file an application for a declaration of invalidity until 2011 cannot
prove that there was no unfair advantage. In its assessment of the plea based on Article 54(2) of Regulation No 207/2009 put forward by the applicant in the case giving rise to the judgment of 4 October 2018, FLÜGEL (T‑150/17, EU:T:2018:641), the Court held that the intervener could be regarded as having actual awareness of the use of the contested mark only, at most, as from 2010 (judgment of 4 October 2018, FLÜGEL, T‑150/17, EU:T:2018:641, paragraph 50). It therefore cannot be criticised in the present dispute for not having filed an application for a declaration of invalidity of the contested mark until 2011 and that fact cannot, a fortiori, be taken into account in order to establish that it was not possible for
unfair advantage to be
gained
from the use of the contested mark.
153    In those circumstances, the fourth complaint of the second plea must be rejected.
The fifth complaint, relating to due cause for
the use of the contested mark
154    The applicant submits that the circumstances that it refers to show its good faith and that it follows that it had due cause to use the contested mark.
155    EUIPO and the intervener contest the applicant’s arguments.
156    It must be noted that, in the event that the proprietor of the earlier mark has shown that there is either actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 40/94 or, failing that, a serious risk that such injury will occur in the future, it is then for the proprietor of the contested mark to establish, as a second step, that there is due cause for the use of that mark (see judgment of 1 March 2018, Position of two parallel stripes on a shoe, T‑85/16, not published, EU:T:2018:109, paragraph 47 and the case-law cited).
157    It should be stated that the question of whether there is due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively (see judgment of 1 March 2018, Position of two parallel stripes on a shoe,
T‑85/16, not published, EU:T:2018:109, paragraph 56 and the case-law cited).
158    In the present case, the applicant claims that the Board of Appeal erred in refusing to take into account the earlier international registration made in 1996 by its predecessor in respect of a figurative mark which contained the name of the mark FLÜGEL and its investments in promoting its mark. The fact of disregarding those elements on the ground that they relate to a mark other than the contested mark is contradictory since the Board of Appeal took account of the results of the survey carried out in October and November 2010 which also related to a mark other than the contested mark.
159    In that regard, first, it is apparent from paragraphs 133 to 137
above that the Board of Appeal did not err in
disregarding the earlier international registration of the applicant’s figurative mark and its investments in promoting
that mark for the purpose of establishing the existence of an unfair advantage.
160    In that context, it should also be noted that EUIPO contends that the use of the applicant’s figurative mark was very limited in the relevant territory, namely Austria, before the filing date of the earlier mark, which the applicant has not disputed. Accordingly, the applicant cannot, in any event, validly rely on the international registration of that figurative mark in order to demonstrate that it had due cause to use the contested mark.
161    Second, it is apparent from paragraph 149
above that the taking into account of the survey carried out in October and November 2010 was not a decisive factor for the purposes of the Board of Appeal’s reasoning.
162    In those circumstances, the fifth complaint of the second plea must be rejected, as must, consequently, the second plea in its entirety.
163    Since none of the pleas in law put forward by the applicant is well founded, the action must be dismissed in its entirety without it being necessary to rule on the admissibility of the applicant’s head of claim seeking dismissal of the application for a declaration of invalidity raised by the intervener.
Costs
164    Under Article 134(1) 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. Since the applicant has been unsuccessful, it 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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Asolo LTD to pay the costs.
Costeira
Gratsias
Perišin
Delivered in open court in Luxembourg on 28 April 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.