JUDGMENT OF THE GENERAL COURT (Second Chamber)
5 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark THE RICH PRADA — Earlier national and international word and figurative marks PRADA — Relative grounds for refusal — Article 8(5) of Regulation(EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) — Likelihood of confusion)
In Case T‑111/16,
Prada SA, established in Luxembourg (Luxembourg), represented by F. Jacobacci, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
The Rich Prada International PT, established in Surabaya (Indonesia), represented by Y. Zhou, Solicitor,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 13 January 2016 (Joined Cases R 3076/2014-2 and R 3186/2014-2), as rectified on 14 March 2017, relating to opposition proceedings between Prada and The Rich Prada International,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, E. Buttigieg and B. Berke (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 18 March 2016,
having regard to the response of EUIPO lodged at the Court Registry on 1 June 2016,
having regard to the response of the intervener lodged at the Court Registry on 10 June 2016,
further to the hearing on 7 March 2017,
having regard to the order of 20 July 2017 reopening the oral part of the procedure,
having regard to the Court’s written question to the parties and their replies to that question lodged at the Court Registry on 8, 9 and 10 August 2017,
having regard to the decision of 21 August 2017 ending the oral part of the procedure,
gives the following
Judgment
1        On 30 August 2011 the intervener, The Rich Prada International PT, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended (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 THE RICH PRADA.
3        Registration was sought in respect of all the goods and services in Classes 30, 32, 35 to 37, 41 and 43 to 45 within the terms 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.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 20/2012 of 30 January 2012.
5        On 30 April 2012, the applicant, Prada SA, filed a notice of opposition to registration of the trade mark applied for in respect of all the goods and services covered by that mark and referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).
6        The opposition was based on, inter alia, the earlier rights which had been the subject of genuine and legitimate use in Germany, France, Italy and the United Kingdom, as set out below:
–        United Kingdom word mark PRADA, registered under No 1338825, designating, inter alia, goods in Class 18, corresponding to the following description: ‘Articles of luggage, travelling bags, bags, handbags, purses, articles made of leather, imitation leather or skin’;
–        United Kingdom figurative mark registered under No 2153901A, designating, inter alia, goods in Classes 18 and 25, corresponding, for each of those classes, to the following description: ‘Handbags, wallets, luggage, attaché cases, tote bags, briefcases, all-purpose sport bags, carry-on bags, shoulder bags, garment bags for travelling, key cases’ (Class 18) and ‘Footwear for men, women and children; coats, raincoats, belts, waistcoats, blouses and pullovers, jackets, trousers, skirts, dresses, suits, shirts and chemises, t-shirts, sweaters, underwear; hosiery, socks and stockings, gloves, ties, scarfs, hats and caps, boots, shoes and slippers’ (Class 25), as reproduced below:
–        international word mark PRADA registered under No 439174, which had been the subject of genuine and legitimate use in Germany and France, designating, inter alia, goods in Classes 18 and 25, corresponding, for each of those classes, to the following description: ‘Goods made of leather and imitation leather not included in other classes; suitcases’ (Class 18) and ‘Clothing, including boots, shoes and slippers’ (Class 25);
–        International figurative mark registered under No 650695, which had been the subject of genuine and legitimate use in Germany, France and Italy, designating, inter alia, goods in Classes 18 and 25, corresponding, for each of those classes, to the following description: ‘Bags, handbags, small purses, suitcases, wallets, purses, briefcases, leather items (not included in other classes); leather goods (not included in other classes), products of imitations of hide and leather (not included in other classes)’ (Class 18) and ‘Clothing for men, women and children, including dresses of skin, shirts, blouses, skirts, suits, jackets, trousers, shorts, vests, sweaters, pyjamas, socks, underwear, knitted blouses, garter belt, pants, coveralls, hats, scarves, ties, raincoats, overcoats, coats, bathing suits, sports suits, anoraks, ski pants, belts, furs (clothing), scarves, gloves (clothing), dressing gowns, shoes, including slippers, sneakers, boots’ (Class 25), as reproduced below:
–        Italian word mark PRADA registered under No 1301352, designating, inter alia, goods in Classes 18 and 25, corresponding, for each of those classes, to the following description: ‘Goods made of leather and imitations of leather not included in other classes; suitcases’ (Class 18) and ‘Articles of clothing, including boots, shoes and slippers’ (Class 25);
–        United Kingdom word and figurative marks PRADA, registered under No 2260362, designating goods in Class 35, corresponding to the following description: ‘The bringing together, for the benefit of others, of a variety of goods, enabling customers conveniently to view and to purchase those goods in a retail jewellery store; the bringing together, for the benefit of others, of a variety of goods, enabling customers conveniently to view and to purchase those goods in a retail leather goods store or a retail luggage store; the bringing together, for the benefit of others, of a variety of goods, enabling customers conveniently to view and to purchase those goods in a retail clothes store, a retail footwear store, a retail sportswear store or a retail lingerie store’, in the case of the figurative marks, as reproduced below:
7        The grounds relied on in support of the opposition were those laid down in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).
8        By decision of 16 October 2014, the Opposition Division partially upheld the opposition and rejected the registration of the mark sought, for the following services:
–        Class 35: ‘Management of retail space; retail services relating to toiletries, cosmetics, perfumes, jewellery, eye wear, clothing, footwear, headgear, bags, luggage, leather goods, key rings, stationery, badges, mugs, posters, umbrellas, textile products, toys and games, food and drink, smokers’ articles, printed publications; arranging, conducting and organisation of shows and fairs for commercial purposes; arranging, conducting and organisation of trade shows; arranging, conducting and organisation of exhibitions; information, advisory and consultancy services relating to the aforesaid; auctioneering’;
–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; arranging, conducting and organising conferences, seminars, symposiums, exhibitions, courses and congresses; arranging, conducting and organising events; night club services; information, advisory and consultancy services relating to the aforesaid’;
–        Class 43: ‘Services for providing food and drink; temporary accommodation; hotel reservation services; arranging of hotel accommodation; provision of hotel venues; provision of hotel facilities; hospitality services; hotel services; restaurant services; bar services; lounge services; catering services; wine bar services; information, advisory and consultancy services relating to the aforesaid’;
–        Class 44: ‘Hygienic and beauty care for human beings and animals; beauty and spa services; beauty salon and hair dressing services; spa services; beauty treatment services; massage services; advisory and consultancy services relating to the aforesaid’.
9        Both the applicant (Case R 3076/2014-2) and the intervener (Case R 3186/2014-2) lodged appeals, respectively, on 2 and 16 December 2014 under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against the decision of the opposition division.
10      By decision of 13 January 2016 (‘the contested decision’), as rectified on 14 March 2017, the Second Board of Appeal of EUIPO joined the cases and:
–        upheld the intervener’s appeal, annulled the decision of the Opposition Division in so far as it allowed the opposition and rejected the application for an EU mark under Article 8(5) of Regulation No 207/2009 with regard to the following services: ‘Management of retail space; retail services relating to toys and games, mugs and stationery; auctioneering’ within Class 35 and ‘Education; providing of training; sporting activities; arranging, conducting and organising conferences, seminars, symposiums, courses and congresses’ within Class 41;
–        upheld the intervener’s appeal and annulled the decision of the Opposition Division in so far as it allowed the opposition and rejected the application for an EU mark under Article 8(1)(b) of Regulation No 207/2009, in respect of retail services relating to food and drink within Class 35;
–        dismissed the intervener’s appeal as to the remainder and the applicant’s appeal in its entirety.
11      In paragraph 6 of the operative part of the contested decision, the Board of Appeal determined that the mark applied for may be registered for the following goods and services:
–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; bee glue (propolis) for human consumption; essences for foodstuffs, except etheric essences and essential oils; flavourings, other than essential oils; flavourings, other than essential oils, for beverages; flavourings, other than essential oils, for cakes; ice cream (binding agents for -); meat tenderizers, for household purposes; powders for ice cream; puddings; rice-based snack food; royal jelly for human consumption, not for medical purposes; sandwiches; sausage binding materials; sea water for cooking; spring rolls; starch for food; stiffening whipped cream (preparations for -); sushi; thickening agents for cooking foodstuffs’;
–        Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;
–        Class 35: ‘Advertising; business management; business administration; office functions; management of retail space; retail services relating to stationery, mugs, toys and games, food and drink; marketing services; business advice; provision of business information; hotel management services; information, advisory and consultancy services relating to the aforesaid; auctioneering; rental of vending machines’;
–        Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs; management of real estate and property, apartment and property management and leasing; management of property and management of real estate; real estate investment; time-share management services; time-share property management agency services for the leasing of real estate property; commercial property investment services; property leasing services; leasing, rental and management of serviced apartments and serviced properties; information, advisory and consultancy services relating to the aforesaid’;
–        Class 37: ‘Building construction; repair; installation services; provision of laundry services; provision of janitorial services; car cleaning services; information, advisory and consultancy services relating to the aforesaid; cleaning machines (rental of -); drilling of wells; mining extraction; quarrying services; rental of road sweeping machines’;
–        Class 41: ‘Education; providing of training; sporting activities; casino services; provision of sports facilities and equipment; provision of facilities for conferences and seminars; provision of facilities for meetings; rental of exercise equipment; provision of fitness and exercise facilities; golf club, golf course and golf instruction services; providing facilities for recreation, swimming, water sports, tennis and other sports; arranging, conducting and organising conferences, seminars, symposiums, exhibitions, courses and congresses; event management services; information, advisory and consultancy services relating to the aforesaid; calligraphy services; dubbing; electronic desktop publishing; layout services, other than for advertising purposes; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals online; publication of texts, other than publicity texts; sign language interpretation; subtitling; translation’;
–        Class 43: ‘Provision of facilities for meetings, conferences and exhibitions; provision of banquet and function facilities; crèche and nursery facilities; information, advisory and consultancy services relating to the aforesaid’;
–        Class 44: ‘Medical services; veterinary services; agriculture, horticulture and forestry services; information, advisory and consultancy services relating to the aforesaid; flower arranging, rental of sanitation facilities; wreath-making’;
–        Class 45: ‘Provision of concierge services; babysitting services’.
12      On the other hand, the Board of Appeal concluded, in paragraph 5 of the operative part of the contested decision, that the mark applied for may not be registered for the following goods and services:
–        Class 35: ‘Retail services relating to toiletries, cosmetics, perfumes, jewellery, eye wear, clothing, footwear, headgear, bags, luggage, leather goods, key rings, badges, posters, umbrellas, textile products, smokers’ articles, printed publications; arranging, conducting and organisation of shows and fairs for commercial purposes; arranging, conducting and organisation of trade shows; arranging, conducting and organisation of exhibitions; information, advisory and consultancy services relating to the aforesaid’;
–        Class 41: ‘Entertainment; cultural activities; arranging, conducting and organising events; arranging, conducting and organising exhibitions; night club services; information, advisory and consultancy services relating to the aforesaid’;
–        Class 43: ‘Services for providing food and drink; temporary accommodation; hotel reservation services; arranging of hotel accommodation; provision of hotel facilities; hospitality services; hotel services; restaurant services; bar services; lounge services; catering services; wine bar services; information, advisory and consultancy services relating to the aforesaid’;
–        Class 44: ‘Hygienic and beauty care for human beings and animals; beauty and spa services; beauty salon and hair dressing services; spa services; beauty treatment services; massage services; information advisory and consultancy services relating to the aforesaid’.
13      In particular, with regard to the opposition based on Article 8(5) of Regulation No 207/2009, the Board of Appeal, in the first place, examined the comparison of the signs. In that regard, it considered, first, that it had to confirm the decision of the Opposition Division in that it found that the marks were similar, after comparing, on the one hand, the mark applied for and, on the other, the earlier Irish word registration No 439174, the earlier Italian word registration No 1301352 and the earlier United Kingdom word registration No 1338825, and the earlier Irish figurative registration No 650695 and the earlier United Kingdom figurative registration No 2153901A; secondly, that the term ‘prada’ was purely distinctive and had no meaning for part of the relevant public in Germany, France or the United Kingdom; thirdly, that that term was entirely reproduced in the mark applied for and that the later mark will strike the relevant public as a derivation of the earlier marks, and fourthly, that, for the English-speaking public, the words ‘the rich’ will modify the word ‘prada’ in a laudatory sense, but without attenuating the dominance and distinctiveness which the word ‘prada’ will enjoy in the mark applied for. The Board of Appeal concluded that the signs at issue were similar. In the second place, the Board of Appeal examined the reputation of the earlier marks and acknowledged that they enjoyed a particularly striking reputation for the goods in Classes 18 and 25 on the relevant territory. In the third place, the Board of Appeal examined, first, the risk of detriment to the reputation of the earlier marks and, secondly, the risk of unfair advantage being taken of the distinctive character or reputation of the earlier marks.
14      With regard to the risk of detriment to the reputation of the earlier marks, the Board of Appeal stated that the applicant had brought together in three categories the services the designation of which by the mark applied for would be detrimental to the reputation of its earlier marks. In that regard, it considered that, in view of the large dissimilarity between the goods covered by the earlier marks and the goods and services covered by the mark applied for, such as car cleaning services or mining extraction in Class 37, it was difficult to imagine that a consumer may establish any significant link, whether positive or negative, between the marks at issue. In order to do so, the signs would have had to be characterised by an extremely high degree of similarity, possibly even being identical. In addition, it concluded that a risk of detriment to the reputation of the earlier marks may arise in relation to financial services in Class 36 or medical services in Class 44. Finally, it observed that, in any event, even if a link were established between the signs at issue, such a link was not sufficient to establish the existence of detriment.
15      As regards the risk of unfair advantage being taken of the distinctive character or the repute of the earlier trade marks, in paragraphs 49 to 79 of the contested decision, the Board of Appeal, in the first place, acknowledged that the positive values evoked by the word element ‘prada’, common to the signs at issue, such as glamour, quality and prestige, could be transferred to the goods and services covered by the mark applied for in that the relevant public for those goods and services knew the earlier marks. However, it found that image transfer was possible only for the goods and services that were strongly linked to the fashion sector through the mutual transference of images of prestige and luxury, such as high-end catering services or hospitality services. In the second place, the Board of Appeal analysed, by category of goods and services, those which could and those which could not be linked to the fashion sector. First of all, the Board of Appeal concluded that an image transfer could not be established for the goods and services identified in paragraph 11 above, taking the view that they were so far removed and so different in nature from the goods covered by the earlier marks that the signs at issue should be characterised by an extremely high degree of similarity, possibly even being identical, so that the public will associate the marks. Similarly, with regard to the goods and services in Classes 30 and 35, the Board of Appeal held that the argument, based simply on the concept of ‘brand extension’, relied on by the applicant before the Board, could not call into question the conclusion that, given the radically different nature of the goods and services at issue, the degree of similarity between the marks was not sufficiently striking as to create an association in the public’s mind, despite the impressive reputation of the earlier marks. On the other hand, the Board of Appeal considered that a risk of unfair advantage being taken of the distinctive character or repute of the earlier trade marks could not be ruled out in respect of the goods and services with a link to fashion and luxury items, listed in paragraph 12 above, and it reduced the list of goods and services for which the Opposition Division had rejected the opposition. Thus, it follows from paragraphs 63 to 65 and 75 to 78 of the contested decision that, for the other services in Classes 35 to 37, 41 and 43 to 45 which did not concern either high-end catering services or hospitality services, and did not have any association with prestige and fashion, such as, for example, the management of retail space or auctioneering in Class 35, education and sporting activities in Class 41, the provision of facilities for meetings in Class 43, medical services and flower arranging in Class 44, babysitting services in Class 45, the Board of Appeal held that the relevant public would not associate the marks at issue. The Board of Appeal concluded that no convincing reason had been presented to demonstrate that the use of the mark applied for in respect of services which in normal discourse would never be called ‘glamorous’ would confer a commercial advantage on the activities of the intervener.
16      As regards the application of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal concluded that a likelihood of confusion under that provision between, on the one hand, the mark applied for and, on the other, the earlier Irish registration No 439174, the earlier Italian registration No 1301352 and the earlier United Kingdom registration No 1338825, could not be upheld due to the dissimilarity between the goods and services covered by the marks at issue. With regard to the comparison between the goods and services in Class 35, covered by the earlier United Kingdom registrations No 2260362, it held that the Opposition Division had committed a manifest error in finding that they were similar to the ‘retail services relating to food and drink’ in Class 35, covered by the mark applied for, and therefore rejected the opposition under Article 8(1)(b) of Regulation No 207/2009, also based on that earlier right.
Forms of order sought
17      The applicant claims that the Court should:
–        annul in part the contested decision and therefore uphold the opposition in its entirety;
–        in the alternative, uphold the contested decision in its entirety;
–        annul the order requiring the applicant to pay the costs of bringing the appeal and order the intervener to pay those costs;
–        order EUIPO to pay the costs.
18      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
19      The intervener contends that the Court should:
–        dismiss the action;
–        uphold the contested decision;
–        order the applicant to pay the costs.
Law
20      As a preliminary point, in so far as the applicant in its first head of claim asks the Court to order EUIPO to uphold the opposition and to refuse to register the mark applied for, it must be held that that part of the first head of claim is inadmissible. Under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), EUIPO is required to take the measures necessary to comply with judgments of the EU Courts. Accordingly, it is not for the Court to issue a direction to EUIPO, but it is for the latter to draw the appropriate inferences from the operative part of this judgment and the grounds on which it is based (see, to that effect, judgment of 14 May 2013, Sanco v OHIM — Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 65).
21      The applicant’s first head of claim should therefore be understood as referring to the partial annulment of the contested decision, in particular in so far as it rejected the opposition and accepted the registration of the mark applied for in respect of the goods and services referred to in paragraph 11 above.
22      It is also appropriate to reject the applicant’s second head of claim, presented in the alternative, requesting that the contested decision be upheld in its entirety. As EUIPO rightly states, under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), the Court has the power only to annul or to alter the contested decision, but it does not have the power to uphold it. The same applies to the intervener’s second head of claim which also requests that the contested decision be upheld.
23      In support of its action, the applicant relies on two pleas in law, alleging infringement of Article 8(5) and infringement of Article 8(1)(b) of Regulation No 207/2009, respectively.
The first plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
24      Under that plea, the applicant contests the Board of Appeal’s application of Article 8(5) of Regulation No 207/2009.
25      Article 8(5) of Regulation No 207/2009, in the version in force on the date the contested decision was adopted, provides that upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is 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 Community trade mark, the trade mark has a reputation in the European Union, and the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
26      It is apparent from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: first, that the earlier trade mark which is claimed to have a reputation is registered; secondly, that the marks at issue are identical or similar; thirdly, that the earlier mark invoked in opposition has a reputation, and fourthly, 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 mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34; of 6 July 2012, Jackson International v OHIM — Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 18; and of 18 November 2015, Mustang v OHIM — Dubek (Mustang), T‑606/13, not published, EU:T:2015:862, paragraph 24).
27      In addition, it must be recalled that the primary function of a mark is unquestionably that of an ‘indication of origin’. Nonetheless, a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure or youth. In that sense, the trade mark has an intrinsic economic value that is separate and distinct from that of the goods and services for which it is registered. The messages in question conveyed by, or associated with, a reputed mark give it an important value that merits protection, and all the more so when, in most cases, the reputation of a mark is a result of the considerable efforts and investments made by its owner. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 35).
28      As regards the fourth condition referred to in paragraph 26 above, Article 8(5) of Regulation No 207/2009 distinguishes three distinct types of injury, namely, that use of the trade mark applied for without due cause, first, would be detrimental to the distinctive character of the earlier mark, second, would be detrimental to the repute of the earlier mark, or third, would take unfair advantage of the distinctive character or repute of the earlier mark. Where the first three conditions referred to in paragraph 26 are met, just one of those three types of injury suffices for Article 8(5) of Regulation No 207/2009 to apply (see, to that effect, judgments of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 36, and of 16 December 2010, Rubinstein v OHIM-Allergan (BOTOLIST), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 41).
29      Pursuant to that case-law, the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the marks at issue, 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. The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling), T‑627/13, not published, EU:T:2015:740, paragraph 68 and the case-law cited).
30      The existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case. Those factors include: the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, 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; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42, and of 16 December 2010, BOTOLIST, T‑345/08 and T‑357/08, not published, EU:T:2010:529 paragraphs 66 and 67; see also judgment of 22 January 2015, Tsujimoto v OHIM — Kenzo (KENZO), T‑322/13, not published, EU:T:2015:47, paragraph 34 and the case-law cited).
31      As regards the degree of similarity between the marks at issue, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. In addition, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will make a link with that earlier mark (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 44 and 54).
32      Furthermore, it is also settled case-law that, the stronger the earlier mark’s reputation, the easier it will be to accept that detriment has been caused to it (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69 and the case-law cited).
33      In order to satisfy the condition relating to the similarity of the marks set out in Article 8(5) of Regulation No 207/2009, it is not necessary to prove that there exists, on the part of the relevant public, a likelihood of confusion between the earlier mark with a reputation and the contested mark. It is sufficient for the degree of similarity between the earlier mark with a reputation and the contested mark to have the effect that the relevant section of the public establishes a link between them even though it does not confuse them (see judgment of 16 December 2010, BOTOLIST, T‑345/08 and T‑357/08, not published, EU:T:2010:529 paragraph 65 and the case-law cited).
34      The Court of Justice also stated that the fact that, for the average consumer who is reasonably well informed and reasonably observant and circumspect, the later mark would call the earlier mark to mind is tantamount to the existence of such a link (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).
35      The applicant claims, first, that the Board of Appeal erred in its interpretation and application of Article 8(5) of Regulation No 207/2009, in that it essentially failed to take into account the fact that the lack of similarity between the goods and services covered by the marks at issue was a condition for the application of Article 8(5) of Regulation No 207/2009, and not an obstacle to its application. Secondly, the Board of Appeal failed to recognise in concrete terms that the reputation of the earlier marks goes beyond the public concerned by the goods or services for which those marks are registered. Consequently, the public concerned by the goods and services of the mark applied for is likely to establish a link between the marks at issue, even if that public is different from that of the earlier marks, and even if the goods and services covered by the marks at issue are different. Thirdly, the applicant presents evidence relating to the exceptional reputation and the extension of its earlier marks to the various areas of activity and further develops the reasons why those marks should be recognised as having an exceptional reputation. Fourthly, the applicant argues that the risks of detriment to the distinctive character and reputation of the earlier marks, and the risk of unfair advantage being taken of the distinctive character and reputation of the earlier marks are sufficiently proven. Fifthly, the applicant argues that, as a result of the phenomenon of brand extension, the relevant public has become accustomed to seeing luxury brands in business sectors which are not directly linked to the principal goods and services covered by those marks. According to the applicant, since luxury brands, by virtue of that phenomenon, become involved in various fields outside their core businesses on a regular basis, the relevant public is likely to make a link between a luxury brand and goods and services that are not immediately related. The phenomenon of brand extension heightened the risk of detriment to the distinctive character of the earlier marks. Generalised use of the mark applied for, as set out in the registration application, is detrimental to the distinctive character of those earlier marks and therefore involves a risk of dilution. Sixthly, the applicant argues that the earlier marks merited full protection against registration of the mark sought, for all the goods and services applied for, owing to their exceptional reputation.
36      With regard, in particular, to the question of the link which the relevant public will be able to establish between the marks at issue, the applicant argues that, in view of the similarity between the marks at issue, and the substantial reputation and distinctiveness of those marks, despite the dissimilarity of the goods and services covered by those marks, the public, which also includes the general public, will establish a link between the marks at issue.
37      EUIPO and the intervener dispute the applicant’s arguments.
38      As a preliminary point, it must be stated that the contested decision is structured as follows: after the analysis relating to the comparison of the signs and the assessment of the reputation of the earlier marks, the Board of Appeal divided its reasoning into two parts, the first concerning the risk of detriment to the reputation of the earlier marks and the second concerning the risk of unfair advantage.
39      In the context of the analysis of the risks of detriment, the Board of Appeal examined the existence of that link, in particular, first, as regards the risk of detriment to the repute of the earlier marks, the Board of Appeal stated in paragraph 45 of the contested decision that, for the public to associate the marks on the basis of goods and services as far apart as the services linked to the road cleaning or mining extraction sectors and fashionable handbags or elegant evening gowns, the signs must be characterised by an extremely high degree of similarity, possibly even being identical. In addition, it stated that, even if such a link were established, that would not be sufficient to establish the existence of a risk of detriment.
40      Secondly, as regards the risk of an unfair advantage, in paragraph 61 of the contested decision, the Board of Appeal found in relation to some goods in Class 30 that, in order for the public to associate the marks on the basis of goods that are so far apart from each other, the signs should be characterised by an extremely high degree of similarity, and should even be identical. In paragraph 62 of that decision, the Board of Appeal found that, as regards some services in Class 35, the degree of similarity between the marks at issue was not sufficiently striking as to create the association, despite the impressive reputation of the earlier marks. In paragraph 63 of the contested decision, the Board of Appeal found that the applicant had also failed to demonstrate any such association with regard to the services in Classes 35 to 37, 41 and 43. In paragraph 65 of the contested decision, it concluded that no transfer of an image to a mark designating goods and services of a different nature had been demonstrated.
41      In essence, the applicant merely relied on the exceptional degree of reputation of its mark and the phenomenon of brand extension in order to call into question the Board of Appeal’s assessment of the link. In addition, the applicant claims that the conditions in Article 8(5) of Regulation No 207/2009 are satisfied in the present case.
42      In the first place, as was pointed out in paragraph 30 above, the existence of the link between the marks at issue must be assessed globally, taking into consideration, not only the strength of the earlier mark’s reputation and the degree of its distinctive character, but also the degree of similarity between the conflicting marks, the nature of the goods or services for which the conflicting marks are respectively registered and the degree of closeness or dissimilarity between those goods or services.
43      In that regard, it must be stated, first, that the Board of Appeal took into consideration the ‘particularly conspicuous’ reputation of the earlier marks. It thus proceeded on the basis of the highest strength of the reputation. Therefore, the Court rejects the applicant’s general arguments that the Board of Appeal did not acknowledge the exceptional reputation of the earlier marks which would lead the relevant public to make a mental connection, even in relation to completely different goods and services.
44      In those circumstances, there is no reason to examine the subsequent evidence submitted by the applicant to demonstrate the exceptional reputation of its earlier marks.
45      Secondly, with regard to the distinctive character of the earlier marks, the Board of Appeal found in paragraph 30 of the contested decision that the term ‘prada’ is purely distinctive and is perceived as fanciful by the relevant public. Next, it stated that that distinctive word is reproduced in the subsequent mark. According to the Board of Appeal, the mark applied for will be perceived by the relevant public as a derivation of the earlier marks and in particular as a variation of the house mark ‘PRADA’. For the English-speaking public, the words ‘the rich’ will modify the word ‘prada’ in a laudatory sense, but without attenuating the dominance and distinctiveness which the word ‘prada’ enjoys in the sign applied for.
46      Thirdly, the Board of Appeal considered that the goods and services at issue were so dissimilar that the marks had to be characterised by an extremely high degree of similarity, possibly even being identical.
47      The applicant did not properly challenge the contested decision on that point. Apart from the general remarks which it made in relation to the concept of brand extension, the definition of the relevant public and the possibility that the relevant public may establish a link, even with regard to the goods and services furthest removed from the sectors of fashion and luxury items, due to the exceptional reputation and distinctive character of the earlier marks, the applicant has not submitted a substantiated challenge to the specific conclusions relating to the dissimilarity of the goods and services reached by the Board of Appeal concerning, in particular, the goods in the road cleaning or mining extraction sectors, casino services, medical and healthcare services, or foodstuffs.
48      Furthermore, not only did the applicant fail to challenge the degree of similarity found by the Board of Appeal, but it expressly agreed with that finding in response to a question put to it by the Court.
49      More particularly, with regard to the arguments concerning the concept of brand extension, suffice it to state that these were indeed taken into consideration by the Board of Appeal which found, in paragraphs 62 and 64 of the contested decision, that those general arguments were not such as to call into question the conclusion that there was no link between the marks at issue. The applicant does not contest the Board of Appeal’s specific findings in that regard.
50      Therefore, the applicant did not demonstrate that a link could be established even in respect of goods and services as dissimilar from those covered by the earlier marks. In particular, it did not demonstrate, beyond making general arguments about the concept of brand extension, how that public will be able to establish a plausible link with the different subcategories of goods and services in Classes 30, 32, 35 to 37, 41, 43 and 45.
51      It follows from the foregoing that the applicant has not managed to call into question the Board of Appeal’s overall assessment of the link, based on the various factors to be taken into account in accordance with the case-law recalled in paragraph 30 above.
52      In the second place, and in any event, it must be pointed out first that, in paragraph 48 of the contested decision, the Board of Appeal found, in relation to the risk of detriment to the reputation of the earlier marks, that, even if a link between the marks could be established, the applicant had not established the existence of any such detriment.
53      In that regard, it must be held that the general arguments advanced by the applicant, that is to say, in essence, that the appearance on the market of goods and services ‘of a lesser calibre’ sold under the mark applied for would certainly harm the reputation of the earlier marks, are not capable of calling into question the detailed reasoning in paragraphs 42 to 48 of the contested decision. In particular, the applicant has not submitted a substantiated challenge to the specific conclusions of the Board of Appeal in that regard.
54      Secondly, with regard to the risk of unfair advantage being taken of the repute or distinctive character of the earlier marks, the Board of Appeal concluded that such a risk could not arise since, first, the applicant’s sole argument was based on the concept of brand extension which could not be applied like a blunt tool to any goods and services and thereby achieve a vast but illegitimate trade monopoly and, secondly, there was nothing to suggest the transfer of image to a mark covering goods and services not of that nature.
55      In that regard, the applicant merely states generally that even when the consumers recognise the differences between the goods and services, they will feel more attracted to the later mark due to their link with the earlier mark. However, it does not put forward any argument that calls into question the Board of Appeal’s conclusions in paragraphs 53 to 65 of the contested decision relating to the lack of transfer of the positive values and image of the earlier marks to the categories of goods and services.
56      Thirdly, with regard to the risk of detriment to the distinctive character of the earlier marks, proof that the use of the subsequent mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or of a serious likelihood that such a change will occur in the future (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 77).
57      In that regard, suffice it to state that the applicant’s arguments relate only to the existence of the link. As was pointed out in paragraph 51 above, the applicant has not managed to establish the existence of a link. In any event, the applicant does not put forward any argument or evidence that demonstrates a change in the behaviour of the average consumer.
58      It follows from all of the foregoing that the first plea in law must be rejected in its entirety.
The second plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009
59      The applicant argues that the Board of Appeal committed an error of assessment by failing to acknowledge the similarity of the goods covered by the marks at issue in Class 35 and that there was a high likelihood of confusion for all of those goods and, at the very least, for ‘retail services relating to food and drink’.
60      EUIPO and the intervener dispute those arguments.
61      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
62      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
63      In the present case, the Board of Appeal annulled the decision of the Opposition Division in so far as it had upheld the applicant’s opposition, on the basis of Article 8(1)(b) of Regulation No 207/2009, as regards ‘retail services relating to food and drink’ in Class 35, taking the view that that provision lays down the prerequisite that the goods and services at issue must be identical or similar, and that that was clearly not the case in the present proceedings.
64      It must be pointed out, as EUIPO rightly states, that the applicant does not advance any argument that calls into question the Board of Appeal’s reasoning, referred to in paragraphs 84 to 86 of the contested decision, concerning the similarity of the goods and services in question. Therefore, the contested decision must be confirmed in that respect.
65      It follows that the second plea in law must be rejected and the action dismissed in its entirety.
Costs
66      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, without there being any need to rule on the third head of claim.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Prada SA to pay the costs.
Prek
Buttigieg
Berke
Delivered in open court in Luxembourg on 5 June 2018.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.