JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
3 May 2018 (*)
(EU trade mark — Invalidity proceedings — Application for registration of the EU word mark MASSI — Earlier national word mark MASI — Article 56(3) of Regulation (EC) No 207/2009 (now Article 63(3) of Regulation (EU) 2017/1001) — Res judicata — Article 53(1)(a) and Article 8(2)(c) of Regulation No 207/2009 (now Article 60(1)(a) and Article 8(2)(c) of Regulation 2017/1001) — Well-known mark within the meaning of Article 6bis of the Paris Convention)
In Case T‑2/17,
J-M.-E.V. e hijos, SRL, established in Granollers (Spain), represented by M. Ceballos Rodríguez and J. Güell Serra, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Alberto Masi, residing in Milan (Italy), represented by C. Ceriani, S. Giudici and A. Ferreri, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 4 October 2016 (R 793/2015-1), relating to invalidity proceedings between Mr Masi and J-M.-E.V. e hijos,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis (Rapporteur), President, S. Papasavvas and O. Spineanu-Matei, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 3 January 2017,
having regard to the response of EUIPO lodged at the Court Registry on 27 March 2017,
having regard to the response of the intervener lodged at the Court Registry on 23 March 2017,
further to the hearing on 10 January 2018,
gives the following
Judgment
Background to the dispute
1        On 27 November 1996, Mr Jaime Masferrer Coma filed an application for registration of an EU trade mark at 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        The trade mark in respect of which registration was sought is the word sign MASSI.
3        The goods in respect of which registration was sought are in Classes 9, 12 and 28 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 9: ‘Helmets for cyclists; protective eyewear; protective clothing against accidents, protection devices for personal use against accidents’;
–        Class 12: ‘Bicycles; shock absorbers, pumps, horns, chains, gear boxes, inner tubes, tyres, hubs, gears, brakes, rims, cranks, handlebars, mudguards, pedals, rubber, tyres, frames, spokes, wheels, seats, saddles and saddle covers, stands, spoke clips, bells, tubeless tyres, dress guards; repair outfits for inner tubes, luggage carriers and bicycle carriers for vehicles’;
–        Class 28: ‘Cycling gloves, protective equipment for shoulders, elbows and knees’.
4        The trade mark application was published in Community Trade Marks Bulletin No 6/1998 of 19 January 1998 and the word sign MASSI was registered on 20 July 1998 under number 414086 for all of the goods referred to in paragraph 3 above.
5        On 17 May 2012, the trade mark registration was transferred to the applicant, J-M.-E.V. e hijos, SRL.
6        On 28 March 2014, the intervener, Mr Alberto Masi, filed an application for a declaration of invalidity of the registered mark in respect of certain of the goods in question, more specifically those in Class 12, listed in paragraph 3 above.
7        That application was based on the following grounds and earlier rights:
–        Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), namely that the EU trade mark application was filed in bad faith;
–        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) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) in reliance on the trade mark MASI being well known within the meaning of Article 8(2)(c) of Regulation No 207/2009 (now Article 8(2)(c) of Regulation 2017/1001) in Belgium, Germany, Greece, France, Italy, Luxembourg, the Netherlands, Austria, Poland and Finland, designating ‘bicycles and parts thereof’;
–        Article 53(1)(c) of Regulation No 207/2009 (now Article 60(1)(c) of Regulation 2017/1001), read in conjunction with Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001), in reliance on the unregistered trade mark, trade name and company name MASI, designating ‘bicycles and parts thereof’, in Belgium, Germany, Greece, France, Italy, Austria, Poland and Finland;
–        Article 53(2)(a) of Regulation No 207/2009 (now Article 60(2)(a) of Regulation 2017/1001), as regards the right to use the name Masi in Italy.
8        By decision of 19 February 2015, the Cancellation Division rejected the application for a declaration of invalidity. It held, inter alia, that that application had to be rejected under Article 56(3) of Regulation No 207/2009 (now Article 63(3) of Regulation 2017/1001), on the basis that it related to the same goods, was partly identical as regards the cause of action and subject matter, and concerned parties connected to those involved in application No 5069 C for a declaration of invalidity, filed by Haro Bicycle Corp. (‘Haro’), which had been rejected by EUIPO in a decision having the force of res judicata.
9        On 20 April 2015, the intervener brought an appeal before EUIPO against that decision.
10      By decision of 4 October 2016 (‘the contested decision’), as corrected by a corrigendum of 3 November 2016, the First Board of Appeal of EUIPO allowed the appeal and declared the EU trade mark to be invalid in respect of all of the contested goods. First, it held that the conditions laid down in Article 56(3) of Regulation No 207/2009 were not satisfied, as the cancellation applicant in the case leading to the earlier decision No 5069 C was a different entity and clearly not the same party within the meaning of that provision.
11      Secondly, the Board of Appeal examined the application for a declaration of invalidity on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(2)(c) of that regulation, and held that the evidence provided by the intervener, considered as a whole, showed clearly and convincingly that the mark MASI was and still is well known for bicycles and parts thereof in Italy, within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’), and in accordance with the relevant case-law.
12      Thirdly, the Board of Appeal considered whether there was a likelihood of confusion between the well-known mark MASI and the registered mark MASSI, and concluded that there was. Accordingly, it granted the application for a declaration of invalidity pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, without considering the other grounds on which the application for a declaration of invalidity was based.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the application for a declaration of invalidity made by the intervener in respect of the contested mark;
–        order EUIPO and the intervener to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
15      The intervener contends that the Court should:
–        dismiss the action and, in any event, make a declaration of invalidity in respect of the contested mark;
–        order the applicant to pay the costs.
Law
16      The applicant raises two pleas in law, the first alleging infringement of Article 56(3) of Regulation No 207/2009, and the second alleging infringement of Article 53(1)(a) and Article 8(2)(c) of that regulation.
The first plea in law, alleging infringement of Article 56(3) of Regulation No 207/2009
17      By its first plea, the applicant argues that the Board of Appeal erred in law in holding that the conditions laid down in Article 56(3) of Regulation No 207/2009, relating to the principle of res judicata, were not satisfied. First, it submits, it is clearly apparent from the documents relating to application 5069 C that the subject matter of those proceedings was identical to that of the present invalidity proceedings, given that they related to the same mark and covered the same goods.
18      Secondly, the cause of action is at least partly identical, in so far as the application for a declaration of invalidity in those proceedings was based on Article 52(1)(b) of Regulation No 207/2009, relating to bad faith, and on Article 53(1)(a), read in conjunction with Article 8(2)(c) of that regulation, relating to the well-known status of the unregistered mark MASI.
19      Thirdly, contrary to the Board of Appeal’s conclusion, even if the parties in those two sets of proceedings are not strictly the same, there is an obvious link, a ‘privity of interest’, between the intervener and Haro, which is sufficient for the principle of res judicata to apply in the present case. In this regard, the applicant observes that the intervener’s father, Mr Faliero Masi, sold the use of the name MASI to Mr Roland Sahm in 1972, who later sold his rights to Haro, a company established in the United States. Next, commercial negotiations took place between the intervener and Haro regarding the global distribution of MASI brand bicycles. It is that same activity, covered by the same mark, on which the intervener is relying in the present case.
20      The Board of Appeal, the applicant submits, completely ignored those matters, which ought to have led it to the conclusion that the conditions laid down in Article 56(3) of Regulation No 207/2009 were satisfied, as the Cancellation Division had held.
21      EUIPO and the intervener dispute those arguments.
22      Article 56(3) of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), provides as follows:
‘An application for revocation or for a declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by the Office or by an EU trade mark court as referred to in Article 95, and the decision of the Office or that court on that application has acquired the authority of a final decision.’
23      It is necessary to examine whether, as the applicant claims, the Board of Appeal erred in law in finding, in paragraphs 20 to 22 of the contested decision, that not all of the conditions laid down by that provision were met, in particular the condition that the parties be the same.
24      In this regard, it should be noted, as EUIPO submits, that that condition cannot be interpreted broadly, as suggested by the applicant. Failing any further clarification as to the concept of ‘the same parties’ in the wording of that provision, it must be interpreted as referring only to parties that are the same, that is, to the same legal entities in the two sets of proceedings or to their successors in title. To extend the principle of res judicata to an administrative decision which concerns parties other than the parties to the proceedings would impede the review of legality of an administrative decision by a judicial authority, which would be clearly contrary to the principle of legality (see, to that effect, judgment of 23 October 2015, Calida v OHIM — Quanzhou Green Garments (dadida), T‑597/13, not published, EU:T:2015:804, paragraph 46).
25      In the present case, it is not disputed that the intervener and Haro are two separate legal entities. The condition that the parties be the same, as laid down by Article 56(3) of Regulation No 207/2009, cannot therefore be regarded as fulfilled in the present case.
26      In any event, even if a broader interpretation of the concept of the identity of the parties, as advocated by the applicant, could be accepted, such an interpretation would not be capable of calling that conclusion into question. First of all, it is apparent from the evidence put forward by the intervener that he objected to an application for registration filed on 9 December 2008 by Haro in Italy, by informing Haro of his intention to bring annulment proceedings. Following that formal notice, Haro withdrew its trade mark application on 17 April 2009. Far from constituting privity of interest, as the applicant claims, it rather seems, therefore, that Haro and the intervener are both holders of rights over the name MASI, but that they have divergent interests, at least on the Italian market. Next, that evidence tends to suggest that the intervener cannot be regarded as the successor in title of Haro, or as an entity acting in an agent-principal relationship with Haro. As EUIPO contends, it has also not been shown that there is a legal relationship between Haro and the intervener and, even if there were such a relationship, it would be impossible to determine its nature.
27      It must therefore be concluded that the Board of Appeal did not err in finding that the condition that the parties be the same, laid down by Article 56(3) of Regulation No 207/2009, was not fulfilled in the present case.
28      Accordingly, the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 53(1)(a) and of Article 8(2)(c) of Regulation No 207/2009
29      By its second plea, the applicant challenges the lawfulness of the ground for invalidity accepted by the Board of Appeal in the contested decision, that is to say, the ground based on the existence of a likelihood of confusion with the earlier well-known mark MASI, pursuant to Article 53(1)(a) and Article 8(2)(c) of Regulation No 207/2009. It claims that the Board of Appeal erred in law in holding that the mark MASI was well known at the point in time at which the applicant filed its application for registration of a mark and at the point in time at which the application for a declaration of invalidity was filed.
30      According to the applicant, which refers to Article 2 of the joint recommendation concerning the provisions on the protection of well-known trade marks, adopted by the Assembly of the Paris Union and the General Assembly of the World Intellectual Property Organisation (WIPO) at the 34th series of meetings of assemblies of the Member States of the WIPO of 20 to 29 September 1999 (‘the joint recommendation’), a range of factors must be taken into account in assessing whether a mark is well known, such as the degree of knowledge or recognition of the mark in the relevant sector of the public, the duration, extent and geographical area of any use of the mark, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the mark applies, the duration and geographical area of any registrations or applications for registration of the mark, the record of successful enforcement of rights in the mark, and in particular the extent to which it has been recognised as well known by the competent authorities, and the value associated with the mark. The applicant also submits that the relevant times for the purposes of that assessment are the filing dates of the application for registration of the contested mark and of the application for a declaration of invalidity.
31      In the first place, the applicant takes the view that the Board of Appeal erred in holding, in paragraph 29 of the contested decision, that the relevant sector of the public is mostly made up of cycling professionals and bicycle enthusiasts. It submits that, according to the case-law, the term ‘consumers’ is to be understood in the broadest sense and should not be restricted solely to those persons who actually and physically consume the goods. It thus argues that bicycles, bicycle frames and parts thereof are addressed to the public at large, not the specific public identified by the Board of Appeal. It also submits that the Cancellation Division held, in relation to the application brought by Haro under reference 5069 C, that the relevant public in relation to those goods was the public at large.
32      In the second place, as regards the evidence produced by the intervener on which the Board of Appeal based its decision, the applicant disputes that this was sufficient to find that the earlier mark MASI was well known. First, the statements made by certain professional cyclists relate to events supposedly occurring in the period 1950-1970 and do not show that the mark is well known today. The applicant also argues that the probative value of those statements is limited. Secondly, the articles published between 2005 and 2014 do not constitute proof of any actual sales or activities in relation to the MASI mark. Thirdly, it observes that the majority of those articles predate the application for a declaration of invalidity and indicate rather that the intervener’s activities have historical significance which appears to have come to an end. Fourthly, only three invoices have been produced relating to Italy and there is nothing demonstrating any marketing expenditure, nor any market studies demonstrating the degree of knowledge or recognition of the mark.
33      In this regard, the applicant observes that reputation of a mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence on the relevant market, during the corresponding period of time and up to the taking of the final decision, which, it submits, was not done in the present case. It also claims that the requirement for a mark to be well known, within the meaning of Article 6bis of the Paris Convention, is more onerous than the requirement for a mark to have a reputation, within the meaning of Article 8(5) of Regulation No 207/2009. None of the evidence produced by the intervener demonstrates a degree of recognition sufficiently high for the mark to be held to be well known, contrary to the Board of Appeal’s conclusion.
34      EUIPO takes issue with the applicant’s submissions and argues, in the first place, with regard to the identification of the relevant public, that the earlier mark is addressed to professional and amateur cyclists, who purchase the goods in question, and additionally to a wider public, consisting of those who may be interested in cycling. It submits that the relevant public will therefore display a higher degree of attentiveness. Furthermore, it contends that it has been established in this case that the earlier mark is well known to a significant portion of the Italian public at large, who would display a higher degree of attentiveness.
35      In the second place, EUIPO expresses the view that the evidence provided, considered as a whole, sufficiently proves the extent and duration of use of the mark MASI in Italy, that mark being highly reputed in the cycling sector. First, the statements signed by professional cyclists have significant probative value, those cyclists having no contractual links to the intervener. Those statements attest to the mark MASI having been famous during the 20th century, from the 1950s, and present at the highest levels of competition. The statements in the submitted magazines demonstrate, EUIPO argues, the magnitude of the mark’s impact on the market and the consequent recognition of the mark. Secondly, the uninterrupted production and consequent presence of MASI products on the Italian market up to 2014 is supported by those statements. Thirdly, there is no reason to believe that the status of the MASI mark as well known, obtained through the values of quality and exclusivity, has ceased to exist. Even if the mark was better known in the past and has become less so over the years, a residual reputation may still have remained, particularly among cycling professionals and bicycle enthusiasts. Accordingly, the evidence supports the conclusion that the earlier mark was well known on the relevant dates, to the level required for protection as a trade mark even if unregistered.
36      The intervener submits, in the first place, that the case-law referred to by the applicant in connection with the relevant public is not applicable, as it relates to whether a mark has a reputation and not whether it is well known within the meaning of Article 6bis of the Paris Convention. In relation to that provision, the degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the goods or services covered by the mark. Only if the public has a sufficient degree of knowledge of the trade mark can that public compare it with the later mark, leading potentially to the invalidity of that later mark. In this regard, there is no basis for a requirement that the mark must be known by a given percentage of the relevant public.
37      In the second place, as to whether the earlier mark MASI is well known, the intervener submits that the Board of Appeal was right to hold that the mark is still in active use, this being demonstrated by the documents produced. Those documents also show that the name Masi and the mark MASI are still well known in respect of handcrafted, high-value bicycles of excellence.
38      In the third place, the intervener asks, in any event, the Court to examine and accept the other grounds for invalidity advanced before the Cancellation Division. First, he submits that the application for a declaration of invalidity should be granted pursuant to Article 53(1)(c) and Article 8(4)(c) of Regulation No 207/2009, on the basis that, under Italian law, the sole trader Alberto Masi has exclusive rights in the unregistered mark and the trading and company name MASI, thus entitling him to prevent third parties from using a later trade mark. Secondly, that application should be granted pursuant to Article 53(2)(a) of Regulation No 207/2009, on the basis of the earlier right to the name Masi under Article 8 of the Italian Industrial Property Code. Thirdly, the application for a declaration of invalidity should also be granted pursuant to Article 53(1)(a) and Article 8(2)(a) of Regulation No 207/2009, on the basis that the earlier mark MASI was registered and valid in Italy at the time when the application for registration of the mark MASSI was filed.
The relevant public
39      As regards the definition of the relevant public in the present case, it should be noted that the Board of Appeal found, in paragraphs 29 and 37 of the contested decision, that the relevant public will be mostly cycling professionals and bicycle enthusiasts, who will display a high degree of attentiveness.
40      According to the case-law, the public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector (judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 24). That case-law, which relates to the notion of reputation, is also applicable to the kindred notion of well-known status (judgment of 22 November 2007, Nieto Nuño, C‑328/06, EU:C:2007:704, paragraph 17).
41      In the present case, it should be noted, first of all, that the intervener submitted before EUIPO and before the General Court that he was the holder of a well-known earlier mark for goods in Class 12, that is to say, inter alia, bicycles and parts thereof, without further clarification (see paragraph 6 above). It is also apparent from paragraph 35 of the contested decision that the Board of Appeal’s examination focused on the question whether the sign MASI was well known in Italy within the meaning of Article 6bis of the Paris Convention for ‘bicycles and parts thereof’ at the time when the application for registration of the contested mark was filed and on the filing date of the application for a declaration of invalidity.
42      It should be noted, as the applicant submits, that ‘bicycles’ in Class 12 are addressed to the general public and not solely to cycling professionals and bicycle enthusiasts (see, to that effect, judgment of 19 February 2016, Infinite Cycle Works v OHIM — Chance Good Ent.(INFINITY), T‑30/15, not published, EU:T:2016:87, paragraph 10). The Board of Appeal also implicitly recognises this in the contested decision since, in paragraph 37 of that decision, it states that the relevant public is ‘mostly’, but not exclusively, made up of cycling professionals and bicycle enthusiasts. Moreover, as the applicant submits, it is apparent from EUIPO’s examination guidelines on the interpretation of Article 8(5) of Regulation No 207/2009, which are applicable in the present case (see paragraph 40 above), that, in addition to the actual purchasers of the goods in question, the concept of relevant public also covers potential purchasers of those goods and members of the public who are only indirectly in contact with the trade mark, in so far as those consumer groups are also targeted by the goods in question.
43      Consequently, it must be concluded that the Board of Appeal, albeit implicitly, correctly defined the relevant public in the contested decision as being made up not only of cycling professionals and bicycle enthusiasts, but also of the general public.
The existence of an earlier well-known mark within the meaning of Article 6bis of the Paris Convention
44      Next, it is appropriate to examine whether the Board of Appeal was right to conclude, in paragraph 35 of the contested decision, that the earlier mark MASI was well known in Italy, within the meaning of Article 6bis of the Paris Convention, for ‘bicycles and parts thereof’ at the time when the application for registration of the contested mark was filed (27 November 1996) and on the filing date of the application for a declaration of invalidity (28 March 2014).
45      In that regard, it should be recalled that, according to Article 53(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid, on application to EUIPO or on the basis of a counterclaim in infringement proceedings, where there is an earlier trade mark as referred to in Article 8(2) of that regulation and the conditions set out in paragraph (1) or (5) of that article are fulfilled.
46      Article 8(2)(c) of Regulation No 207/2009 includes within the concept of an earlier trade mark those marks which are well known within the meaning of Article 6bis of the Paris Convention.
47      Article 6bis(1) of the Paris Convention is worded as follows:
‘The countries of the Union [for the protection of industrial property] undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods … ’
48      It is clear from that provision that well-known marks within the meaning of Article 6bis of the Paris Convention are marks which, on the basis of their reputation in the territorial area at issue and irrespective of whether proof of registration is provided, enjoy protection against a likelihood of confusion (judgment of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraph 51).
49      Since Article 8(2)(c) of Regulation No 207/2009 refers to trade marks which are ‘well known in a Member State, in the sense in which the words “well known” are used in Article 6bis of the Paris Convention’ it is necessary, in order to ascertain how the existence of a well-known mark can be proved, to refer to the guidelines for the interpretation of Article 6bis (judgment of 17 June 2008, El Corte Inglés v OHIM — Abril Sánchez and Ricote Saugar (BoomerangTV), T‑420/03, EU:T:2008:203, paragraph 79).
50      Under Article 2 of the joint recommendation, in determining whether a mark is a well-known mark within the meaning of the Paris Convention, the competent authority can take into account any circumstances from which it may be inferred that the mark is well known, including: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent to which they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as well known by competent authorities; the value associated with the mark (judgment of 17 June 2008, BoomerangTV, T‑420/03, EU:T:2008:203, paragraph 80).
51      Article 2(1)(c) of the joint recommendation states that the factors listed in paragraph 50 above are ‘guidelines to assist the competent authority in determining whether the mark is a well-known mark [and] are not pre-conditions for reaching that determination’, that ‘the determination in each case will depend upon the particular circumstances of that case’, that, ‘in some cases all of the factors may be relevant’, that, ‘in still other cases, none of the factors may be relevant and the decision may be based on additional factors that are not listed [in paragraph 50] above’ and that ‘such additional factors may be relevant, alone, or in combination with one or more of the factors listed [in paragraph 50] above’.
52      Furthermore, since the Court of Justice has held, in the judgment of 22 November 2007, Nieto Nuño (C‑328/06, EU:C:2007:704, paragraph 17), that well-known status is a kindred concept to that of reputation, regard must be had to the assessment criteria laid down by the Court of Justice for reputation, a concept which is referred to in Article 5(2) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) and in Article 8(5) of Regulation No 207/2009.
53      In that regard, as may be extrapolated from the judgment of 14 September 1999, General Motors (C‑375/97, EU:C:1999:408), it cannot be inferred from either the letter or the spirit of Article 8(5) of Regulation No 207/2009 that the trade mark must be known by a given percentage of the defined public. In examining the degree of knowledge required of a well-known trade mark or a trade mark which has acquired a reputation, all the relevant facts of the case must be taken into consideration, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. In addition, territorially, the condition is fulfilled when, in accordance with the terms of Article 8(5) of Regulation No 207/2009, the trade mark has a reputation ‘in the Member State’. In the absence of any definition of this latter provision in this respect, a trade mark cannot be required to have a reputation or well-known status ‘throughout’ the territory of the Member State. It is sufficient for it to exist in a substantial part of it (see, to that effect and by analogy, judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraphs 25 to 28).
54      Moreover, although, in accordance with the joint recommendation, it need not be established that the non-registered mark was put to use in the territory in respect of which protection is claimed, by contrast, it cannot reasonably be disputed that the non-registered mark must be well known in the territory of the Member State whose national law is relied upon in support of the notice of opposition (judgment of 2 February 2016, Benelli Q.J. v OHIM — Demharter (MOTO B), T‑169/13, not published, EU:T:2016:56, paragraph 60).
55      It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to conclude that the earlier mark MASI was well known among the relevant public, having regard to the evidence provided by the intervener before EUIPO.
56      The evidence relating to the earlier mark MASI being well known that was taken into account by the Board of Appeal in the contested decision is summarised in paragraph 27 of that decision. It includes registrations of the word mark MASI from 1973 to 2003 and, as from 2009, extracts from the register of companies concerning the company founded by Alberto Masi in 1974, extracts from the intervener’s website from 2014 and a publication entitled MASI — Stories of Champions and Bicycles, undated, statements made by Italian cycling champions indicating that MASI is a well-known mark and that they used MASI bicycles in the years 1950-1970, invoices covering the period 1974-2012 which confirm the sale of bicycles and bicycle parts, articles published in various newspapers and magazines and a statement by a film producer indicating that a documentary on the intervener and the mark MASI was in the course of production in June 2015.
57      First, the statements of Italian cycling champions to which the Board of Appeal referred, in paragraph 29 of the contested decision, appear to confirm that MASI bicycles were known to cycling professionals from the 1950s until the 1970s. It should be recalled, however, that, as stated by the Board of Appeal in paragraph 26 of the contested decision, the relevant times for the purposes of establishing that the earlier mark in the present case is well known are the filing dates of the application for registration of the contested mark (27 November 1996) and of the application for a declaration of invalidity (28 March 2014). However, these statements do not prove, by themselves, that the earlier mark MASI was still well known on those two dates. Therefore, the Board of Appeal erred in finding, in paragraph 29 of the contested decision, on the basis of those statements, that the mark MASI was renowned in the field of racing bicycles since the 1950s, thereby suggesting that the earlier mark had remained well known up to those two dates.
58      While it cannot be ruled out that an ‘historical’ mark might still enjoy a certain surviving reputation (see, to that effect, judgment of 8 May 2014, Simca Europe v OHIM — PSA Peugeot Citroën (Simca), T‑327/12, EU:T:2014:240, paragraphs 46, 49 and 52), it should be recalled that the well-known character of an earlier mark, within the meaning of Article 6bis of the Paris Convention, cannot be assumed on the basis of fragmentary and insufficient evidence (see, to that effect and by analogy, judgment of 2 February 2016, MOTO B, T‑169/13, not published, EU:T:2016:56, paragraph 79).
59      Secondly, the Board of Appeal relied, in paragraphs 30 and 31 of the contested decision, on various extracts from newspapers and magazines.
60      As regards, first of all, the extracts from the publication MASI — Stories of Champions and Bicycles, these indicate, as the Board of Appeal states in paragraph 31 of the contested decision, that MASI bicycles have historical significance and that ‘the MASI workshop is still today a myth all over the world’. It should be noted, however, that certain extracts from that publication also appear to indicate that MASI’s continued operation in Italy is not guaranteed for the future (‘Although Alberto Masi, a pure craftsman, is today producing bicycles admired throughout the world, it will be difficult to continue this in the future’).
61      Next, in an article in the Gazzetta dello Sport, the famous Italian cyclist Alfredo Martini actually appears at the handlebars of a bicycle upon which it is possible to discern clearly the mark MASI. Another article in the same newspaper refers to the intervener’s workshop, located inside the Vigorelli stadium in Milan, and to the fact that he has spent his life, like his father Faliero, making genuine works of art, very lightweight, made to break the hour record. The November-December 2013 issue of the magazine Biciclette d’epoca also shows a MASI Gran Criterium bicycle from 1974.
62      Finally, an entire article of the magazine Rouler from 2011 is dedicated to MASI bicycles, in English. However, as the applicant submits, that article contains numerous extracts which present the mark MASI as a prestigious but historical mark, while the intervener is described in that article as ‘representative of a lost world’ due to the difficulties experienced by marks ‘made in Italy’ in facing global competition.
63      Thirdly, with regard to the documentary referred to by the Board of Appeal in paragraph 32 of the contested decision, which includes an episode on the intervener and his mark MASI, it should be noted that the Board of Appeal relied, in that regard, solely on a statement by the film company Lumière, annexed to the statement of grounds of the appeal before it, confirming that that documentary was in the course of production in June 2015. However, as the applicant submits, neither the existence nor the content of that documentary have been supported by other evidence. Furthermore, nowhere in the file is there anything to show that the documentary actually contains a reference to MASI bicycles.
64      Fourthly, as regards the invoices produced by the intervener, it is common ground that they date mainly from the 1970s. It is precisely at this time that the rights to the mark MASI were sold by the intervener’s father, Mr Faliero Masi, to the predecessor in title of Haro and that the latter travelled to the United States to develop the mark there, while the intervener continued his business in Italy. The longevity of the mark Masi in Italy may therefore be doubted.
65      It should, however, be recalled in this regard that, in accordance with the joint recommendation, it need not be established that the non-registered mark was put to use in the territory in respect of which protection is claimed (see paragraph 54 above). However, the duration, extent and geographical area of any promotion of the mark are among the relevant criteria in examining whether a mark is a well-known mark within the meaning of the Paris Convention (see paragraph 50 above).
66      As EUIPO contends, some of the invoices issued for Italy date back to the 1990s and are therefore relevant in respect of the filing date of the application for registration of the contested mark, on 27 November 1996. Other more recent invoices also refer, up to 2012, to sales both in Italy and in other countries such as Germany, Belgium, the United States, Japan, Sweden and Switzerland.
67      However, as argued by the applicant, most of those invoices predate 1996 or relate to sales destined for another country. Among the invoices issued after 1996, only a dozen or so of them may be linked to the relevant territory, namely Italy, and merely establish sporadic sales of bicycles and spare parts.
68      It must be concluded, therefore, that that evidence was insufficient for the purpose of finding, as the Board of Appeal stated in paragraphs 34 and 35 of the contested decision, that the applicant for a declaration of invalidity had clearly, convincingly and effectively shown that the mark MASI was well known in Italy within the meaning of Article 6bis of the Paris Convention for bicycles and parts thereof at the time when the application for registration of the contested mark was filed (27 November 1996) and on the filing date of the application for a declaration of invalidity (28 March 2014).
69      It should be observed, moreover, that the intervener has not produced any evidence relating to the other relevant factors mentioned by the joint recommendation (see paragraph 50 above) in order to establish that his earlier trade mark is well known.
70      First, it must be stated that the intervener has failed to provide, in support of his line of argument, any document mentioning the market share held by the mark or even any document demonstrating the scale of the investments (see, to that effect, judgment of 1 February 2012, Carrols v OHIM — Gambettola (Pollo Tropical CHICKEN ON THE GRILL), T‑291/09, EU:T:2012:39, paragraph 75).
71      Secondly, an internet search for the earlier mark in question from a search engine does not refer to the intervener’s goods, but instead to those of Haro, sold under the same name in the United States. Furthermore, the intervener has adduced no tangible evidence of promotion of the mark or of the goods to which it applies.
72      Thirdly, as regards the criteria relating to the duration and geographical area of any registration or application for registration, it should be borne in mind that the earlier mark MASI was registered continuously up to 2003, and again from 2009, in Italy. In 2003, however, it appears that the registration of the mark was not renewed due to an error or oversight on the part of the intervener.
73      Finally, no reference has been made to any decision in which the mark has been recognised as well known by the competent authorities.
74      It is not possible, therefore, in the light of all the evidence submitted by the intervener, to ascertain the actual degree of knowledge or recognition of the mark in the relevant sector of the public, without relying on assumptions. However, it should be recalled that status as a well-known mark cannot be established on the basis of assumptions (see paragraph 58 above).
75      Finally, it should be borne in mind that the public’s degree of knowledge of a well-known mark is higher than for a mark that has a reputation, with the result that the standard of proof required in order to establish that a mark is ‘well known’ for the purposes of Article 6bis of the Paris Convention is higher than that applicable to marks that have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. The purpose of that provision is to provide special protection for well-known marks against exploitation in countries in which they are not yet registered. It is not surprising therefore if the requirement of being well known imposes a relatively high standard for a mark to benefit from such exceptional protection (see, to that effect, judgment of 17 June 2008, BoomerangTV, T‑420/03, EU:T:2008:203, paragraph 110, and Opinion of Advocate General Jacobs in General Motors, C‑375/97, EU:C:1998:575, points 32 and 33).
76      It must therefore be held that the intervener has not adequately established that the earlier mark was a well-known trade mark within the meaning of Article 6bis of the Paris Convention at the time when the application for registration of the contested mark was filed (27 November 1996) and, in particular, on the filing date of the application for a declaration of invalidity (28 March 2014). As the applicant submits, even though the earlier mark MASI might, in the past, have enjoyed some reputation, or even well-known status, in the domain of cycling, it is nevertheless essentially historical and it has not been shown, by means of sufficient evidence, that it continued to exist up to the filing date of the application for a declaration of invalidity.
77      Consequently, the second plea in law must be upheld and the contested decision annulled.
78      Since the contested decision is annulled for infringement of Article 53(1)(a) and Article 8(2)(c) of Regulation No 207/2009, the ground for invalidity accepted by the Board of Appeal relating to the existence of an earlier well-known mark within the meaning of the Paris Convention no longer exists, with the result that there is no further need to examine whether there is any likelihood of confusion between the two marks.
The other grounds for invalidity relied on by the intervener
79      In the alternative, it is necessary to consider the intervener’s request that the Court rule on the grounds for invalidity relied on before the Cancellation Division, as summarised in paragraph 38 above.
80      It must be stated, in this regard, that the Board of Appeal did not rule, in the contested decision, on those grounds for invalidity, since it upheld the application for a declaration of invalidity on the ground that there was a likelihood of confusion with the earlier well-known mark MASI pursuant to Article 53(1)(a) and Article 8(2)(c) of Regulation No 207/2009.
81      It should be recalled that the purpose of the action before the General Court is to obtain a review of the legality of the decision of the Board of Appeal of EUIPO. Consequently, the Court’s review may not go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 12 March 2014, El Corte Inglés v OHIM — Technisynthese (BTS), T‑592/10, not published, EU:T:2014:117, paragraph 19 and the case-law cited).
82      Furthermore, even on the assumption that the intervener’s request may be interpreted as an application for alteration of the contested decision, it should be recalled that the power of the Court to alter decisions does not have the effect of conferring on it the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
83      In the present case, it should be noted, first, that the Board of Appeal did not rule on the grounds for invalidity relied on by the intervener and, second, that the Court does not have sufficient material to rule on those grounds for invalidity. The intervener’s request that the Court examine them must therefore be rejected as inadmissible.
Costs
84      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 EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
85      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear his own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 October 2016 (R 793/2015-1);
2.      Orders EUIPO to pay, in addition to its own costs, those incurred by J-M.-E.V. e hijos, SRL;
3.      Orders Mr Alberto Masi to bear his own costs.
Berardis
Papasavvas
Spineanu-Matei
Delivered in open court in Luxembourg on 3 May 2018.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.