62011TJ0453_EN
Parties
Grounds
Operative part
Parties
In Case T‑453/11,
Gilbert Szajner,
residing in Niort (France), represented by A. Lakits-Josse, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Forge de Laguiole SARL,
established in Laguiole (France), represented by F. Fajgenbaum, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM dated 1 June 2011 (Case R 181/2007-1), relating to invalidity proceedings between Forge de Laguiole SARL and Gilbert Szajner,
THE GENERAL COURT (First Chamber)
composed of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,
Registrar: C. Heeren, Administrator,
having regard to the application lodged at the Court Registry on 8 August 2011,
having regard to the response of the intervener lodged at the Court Registry on 25 November 2011,
having regard to the response of OHIM lodged at the Court Registry on 12 December 2011,
having regard to the reply lodged at the Court Registry on 20 April 2012,
having regard to the rejoinder of the intervener lodged at the Court Registry on 6 July 2012,
further to the hearing on 11 February 2014,
having regard to the additional observations submitted by the parties upon invitation by the Court, lodged at the Court Registry on 24 and 25 February and on 8 and 9 April 2014,
gives the following
Judgment
Grounds
Background to the dispute
1. The applicant, Gilbert Szajner, is the proprietor of the Community word mark LAGUIOLE, which was applied for on 20 November 2001 and registered on 17 January 2005 by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (OJ 2009 L 78, p. 1)).
2. Following the partial withdrawal that took place during the proceedings before OHIM, the goods and services in respect of which the trade mark LAGUIOLE is registered are in, inter alia, Classes 8, 14, 16, 18, 20, 21, 28, 34 and 38 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 8: ‘Hand tools and implements (hand-operated); spoons; saws, screwdrivers, razors, razor blades; shaving cases; nail files and nail nippers, nail-clippers; manicure sets’;
– Class 14: ‘Precious metals and their alloys; jewellery, precious stones; jewel cases of precious metal; chronometric instruments, cuff links, tie pins, ornamental novelty pins; key rings; purses of precious metal; watches and watch straps; boxes, candlesticks, cigar cases, household and kitchen utensils and containers of precious metal; tableware of precious metal’;
– Class 16: ‘School supplies; paper-cutters; pencils, pencil lead holders, rubber erasers; envelopes; binders; albums, books, almanacs, pamphlets, writing or drawing books, catalogues; calendars, lithographs, posters’;
– Class 18: ‘Leather and imitations of leather; trunks, suitcases and travelling bags; walking sticks; handbags; beach bags; bags, travelling sets and travelling trunks; pocket wallets; card cases (notecases), attaché cases; briefcases; key cases (leatherwear); purses, not of precious metal’;
– Class 20: ‘Frames, works of art or decorative items of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’;
– Class 21: ‘Kitchen utensils and services (tableware) of glass, porcelain and earthenware; tableware (other than cutlery) not of precious metals; corkscrews; bottle-openers, boxes of metal for dispensing paper towels; egg timers (sand glasses); shaving brushes, fitted vanity cases’;
– Class 28: ‘Gymnastic and sporting articles (except swimming articles, clothing, mats and footwear); golf gloves’;
– Class 34: ‘Smokers’ articles; matches, lighters for smokers; cigar and cigarette boxes, not of precious metal; cigar cutters; pipes; pipe cleaners’;
– Class 38: ‘Telecommunications; information about telecommunications; news agencies; message sending; computer-aided transmission of messages and images; communications by and/or between computers and computer terminals; communications by telephone; communication, transmission of information contained in databases or in a data transmission server; telephone message services, electronic mail or messages by means of data transmission; communication and transmission of messages, information and data, online or by delay time, by means of data processing systems, computer networks, including the global telecommunications network known as the Internet and the global network known as the Web; transmission of information by telecommunications networks, including the worldwide network known as the Internet’.
3. On 22 July 2005, the intervener, Forge de Laguiole SARL, filed an application for a declaration of partial invalidity in respect of the trade mark LAGUIOLE under Article 52(1)(c) of Regulation No 40/94, in conjunction with Article 8(4) of that regulation (now Articles 53(1)(c) and 8(4) of Regulation No 207/2009).
4. The application for a declaration of invalidity was based on the business name Forge de Laguiole, which was used by the intervener for the ‘manufacture and sale of all cutlery articles, scissors, gift articles and souvenirs — all tableware-related articles’. According to the intervener, this business name — which is of more than mere local significance — entitles it under French law to prohibit the use of a subsequent trade mark.
5. The application for a declaration of partial invalidity was directed against all of the goods and services referred to in paragraph 2 above.
6. By decision of 27 November 2006, the Cancellation Division rejected the application for a declaration of invalidity.
7. On 25 January 2007, the intervener filed a notice of appeal at OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Cancellation Division’s decision.
8. By decision of 1 June 2011 (‘the contested decision’), the First Board of Appeal upheld the appeal in part and declared that the trade mark LAGUIOLE was invalid for the goods in Classes 8, 14, 16, 18, 20, 21, 28 and 34. It dismissed the appeal as regards the services in Class 38.
9. In particular, the Board of Appeal considered that under French case-law, the protection enjoyed by a business name extended to, as a matter of principle, all of the business activities covered by the objects of the company, but that in cases where the objects were vague or the activities pursued were not covered by them, the protection was limited to the activities actually and specifically pursued. In the present case, the objects of the intervener were sufficiently clear as regards the ‘manufacture and sale of all cutlery articles, scissors’. The Board of Appeal also stated that even if it were to be conceded that the wording of the objects of the company (‘manufacture and sale of all gift articles and souvenirs — all tableware-related articles’) was vague, the business name of the appellant deserved protection, at least in the sectors where it had actually pursued its business prior to filing of the application for registration of the trade mark LAGUIOLE.
10. The Board of Appeal considered that the intervener had demonstrated that it had carried on a business activity, prior to filing of the application for registration of the trade mark LAGUIOLE, involving the trade in goods falling within ‘tableware’, ‘homeware’, the wine sphere, scissors and articles for smokers, golfers, hunters and for leisure, as well as other accessories. By contrast, the intervener had failed to demonstrate that it had carried on a business activity in respect of luxury goods and travel articles which, moreover, were not covered by its objects. Lastly, the Board of Appeal considered that, except for telecommunication services in Class 38, all of the goods covered by that trade mark encroached upon the intervener’s business sectors or were situated in related business sectors.
11. In the case of the conflicting signs, the Board of Appeal considered that the word ‘laguiole’, although descriptive and non-distinctive for knives, was nevertheless the dominant element, or at least the codominant element, of the business name Forge de Laguiole, even where that name was used for knives. In an overall appraisal, the conflicting signs displayed certain aural, visual and conceptual similarities which could not be offset by the mere addition of the generic expression ‘forge de’.
12. The Board of Appeal concluded that there would be a likelihood of confusion for French consumers were the trade mark LAGUIOLE to be used for identical or similar goods or services intended for the same consumers and sold in the same outlets as the ‘cutlery, scissors, gift items or items intended for tableware’ falling within the intervener’s business sectors. It also considered that the business activities of the intervener would be affected were the trade mark to be used for complementary goods, inseparable from those activities, even falling within related business sectors where such activities could be developed naturally.
13. Lastly, the Board of Appeal found that on account of its prestige, even its reputation, the business name Forge de Laguiole had a strong distinctive character and was entitled to exceptional protection even in business sectors differing from those covered by the objects of the company.
Forms of order sought by the parties
14. The applicant contends that the Court should:
– annul the contested decision;
– order the intervener to pay its own costs and those of the applicant.
15. OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
16. The intervener contends that the Court should:
– uphold the decision of the Board of Appeal;
– order the applicant to pay the costs.
Law
1. Documents filed for the first time before the General Court
17. In the reply and the rejoinder, the applicant and the intervener, respectively, submitted a certain number of documents which were not part of the file in the proceedings before OHIM.
18. Thus, the applicant submitted the following documents:
– three extracts from a dictionary (Annexes 34, 35 and 39 to the reply);
– an extract from an auction catalogue (Annex 36 to the reply);
– two extracts showing results from an Internet search engine (Annexes 37 and 40 to the reply);
– an extract from an online encyclopaedia (Annex 38 to the reply);
– two press articles (Annex 41 to the reply);
– extracts showing the results of a trade mark search in the database of the French National Intellectual Property Institute (INPI) (Annex 42 to the reply);
– four copies of decisions of the Opposition Division of OHIM (Annexes 34a, 34b, 37a and 38a to the reply).
19. The intervener submitted the following documents:
– judgments from different French courts (Annexes 55, 57, 58, 67, 68, 69, 70, 73 and 74 to the rejoinder);
– three decisions of the Boards of Appeal and the Opposition Division of OHIM (Annexes 56, 59 and 66 to the rejoinder);
– extracts from OHIM’s guidelines concerning opposition proceedings (Annex 60 to the rejoinder);
– four press articles taken from the Internet (Annex 61 to the rejoinder);
– three extracts from Internet sale sites (Annexes 63 to 65 to the rejoinder);
– an extract from the French Consumer Code (Annex 71 to the rejoinder);
– extracts from the 2011 activity report of the French Directorate-General for Competition Policy, Consumer Affairs and Fraud Control (DGCCRF) (Annex 72 to the rejoinder).
20. OHIM also claimed, in its additional observations of 21 February 2014, that the judgment of the French Cour de cassation (Court of Cassation) of 10 July 2012 (C.Cass. Ch. Com., Cœur de princesse
v Mattel France, No 08-2012.010), relied on by the applicant, should be excluded from consideration as inadmissible.
21. It should be recalled, in that regard, that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of OHIM in accordance with Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Annexes 34 to 42 to the reply and Annexes 61, 63 to 65, and 72 to the rejoinder should therefore be excluded, without it being necessary to assess their probative value (see, to that effect, Case T‑346/04 Sadas
v OHIM — LTJ Diffusion (ARTHUR ET FELICIE)
[2005] ECR II‑4891, paragraph 19 and the case-law cited).
22. By contrast, Annexes 34a, 34b, 37a and 38a to the reply and Annexes 56, 59, 60 and 66 to the rejoinder, although produced for the first time before the Court, are not strictly evidence but relate to OHIM’s usual practice in reaching decisions, to which, even after the proceedings before OHIM are complete, a party has the right to refer ( ARTHUR ET FELICIE, paragraph 21 above, paragraph 20).
23. The same is true of Annexes 55, 57, 58, 67 to 71, 73 and 74 to the rejoinder, as well as the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above), which must be ruled admissible as they relate to national legislation and the national courts’ usual practice in reaching decisions, to which, even after the proceedings before OHIM are complete, a party has the right to refer. Neither the parties nor the Court itself can be precluded from drawing on national legislation or case-law for the purposes of interpreting national law to which EU law refers, as is the case here (see paragraph 29 below), since what is in issue is not the allegation that the Board of Appeal failed to take into account the facts of a specific judgment handed down by French court, but rather the reliance on statutory provisions or judgments in support of a plea alleging that the Boards of Appeal misapplied a provision of national law (see, by analogy, Case T‑277/04 Vitakraft-Werke Wührmann
v OHIM — Johnson’s Veterinary Products (VITACOAT)
[2006] ECR II‑2211, paragraphs 70 and 71).
24. Furthermore, in so far as OHIM relies on Case C‑263/09 P Edwin
v OHIM [2011] ECR I‑5853, paragraphs 46 to 57, to challenge the admissibility as evidence of the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above), it is sufficient to note that it does not follow from the former judgment that the General Court is precluded from taking into account evidence produced for the first time before it by a party for the purpose of demonstrating that the Board of Appeal misapplied the national law relied on before the Board. In that case, the Court of Justice only examined whether the General Court had infringed a national rule applied to the substance of the case and whether the Court of Justice had jurisdiction to establish the existence of such an infringement ( Edwin
v OHIM, paragraph 44). It is true that the Court of Justice stated that a party seeking the application of a national rule is required to provide OHIM with particulars establishing the content of that rule (see Edwin
v OHIM, paragraph 50). However, this does not mean that the application of the national rule by OHIM cannot be reviewed by the General Court in the light of a national judgment which postdates the adoption of the OHIM decision and is relied on by a party to the proceedings.
25. Lastly, OHIM’s argument that the production by the applicant of the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above) at the hearing, and not before, constitutes a ‘delaying procedural tactic’, must be rejected. First of all, that judgment was delivered a few days after the filing of the intervener’s rejoinder, when the written procedure — although not formally closed — was, in principle, over. Therefore, the applicant could not reasonably have relied on the judgment of 10 July 2012 in its pleadings. Second, contrary to OHIM’s assertions, the applicant did not invoke the judgment of the French Cour de cassation of 10 July 2012, paragraph 20 above, only at the hearing; it also relied on that judgment in the statement of reasons for its request for a hearing, which was lodged at the Court Registry on 23 August 2012 and notified to OHIM on 11 September 2012.
2. Substance
26. The applicant raises a single plea in law, alleging infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof.
27. Pursuant to these two provisions, the existence of a sign other than a mark makes it possible to obtain a declaration that a Community trade mark is invalid if that sign satisfies all of four conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to dispute the validity of a Community trade mark throughout the Community under Article 1(2) of Regulation No 207/2009 (Joined Cases T‑318/06 to T‑321/06 Moreira da Fonseca
v OHIM — General Óptica (GENERAL OPTICA)
[2009] ECR II‑649, paragraph 32).
28. The first two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, are apparent from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation ( GENERAL OPTICA, paragraph 27 above, paragraph 33).
29. By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. This reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the Community trade mark system to be relied on against a Community trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the Community trade mark and whether it can justify a prohibition of the use of a subsequent trade mark ( GENERAL OPTICA, paragraph 27 above, paragraph 34).
30. In the present case, it is not in dispute that the business name Forge de Laguiole is a sign used in the course of trade, within the meaning of Article 8(4) of Regulation No 207/2009, and that it is of more than mere local significance. Nor have the parties disputed — in the proceedings before OHIM or in their pleadings before the Court — that the rights to that business name were acquired, in accordance with French law, prior to 20 November 2001, being the date of application for registration of the trade mark LAGUIOLE.
31. In so far as the applicant sought to challenge at the hearing — by reference to its French trade marks LAGUIOLE, applied for in 1993 — the claim that the intervener’s business name in its current form predated the Community trade mark LAGUIOLE, suffice it to note that in this case, only the date on which the application for registration of that Community trade mark was filed is relevant, that is 20 November 2001 (see paragraph 1 above).
32. By contrast, the parties disagree on the fourth condition referred to in paragraph 27 above, concerning whether and, where appropriate, to what extent the intervener’s business name enables it to prevent the applicant from using the subsequent trade mark LAGUIOLE. In accordance with the case-law cited in paragraph 29 above, the answer to that question depends on French law alone.
33. In this instance, the Board of Appeal, in the light of the French case-law existing as of the date of adoption of the contested decision, based its reasoning on two pillars, each of which was deemed to be sufficient, on its own, to substantiate the conclusion that the protection enjoyed by the intervener’s business name covered all of the activities referred to in the objects of the company.
34. First, the Board of Appeal essentially considered that the wording of the intervener’s objects was sufficiently clear to support the finding that the protection conferred by the intervener’s business name extended to all of the business activities specified in its objects (paragraphs 87 to 90 of the contested decision). Second, it considered that even if it was conceded that this was not the case for the ‘manufacture and sale of … all gift articles and souvenirs — all tableware-related articles’, the intervener had proven that it had diversified its business, before 20 November 2001, into ‘tableware’, ‘homeware’, ‘the wine sphere’, scissors, articles for smokers, golfers, hunters and for leisure, as well as ‘other accessories’ (paragraphs 91 to 94 of the contested decision).
35. It is therefore necessary to examine each of the two pillars on which the contested decision is based.
Extent of the protection conferred by the business name Forge de Laguiole
36. Articles L. 714-3 and L. 711-4 of the French Intellectual Property Code (‘IPC’) are worded as follows:
L. 714-3
‘The registration of a trade mark which is not in accordance with the provisions of Articles L. 711-1 to L. 711-4 shall be declared invalid by court order.
…
Only the proprietor of a prior right may raise an action for annulment on the basis of Article L. 711-4. However, his action shall not be admissible if the application for registration of the trade mark was filed in good faith and he has acquiesced in its use for a period of five years.
The annulment has absolute effect.’
L. 711-4
‘A sign may not be adopted as a trade mark if it interferes with prior rights, in particular:
…
(b) a business name or corporate name, if there is a likelihood of confusion on the part of the public;
…’
37. It is not disputed that the right to obtain the annulment of a subsequent trade mark based on a business name encompasses a fortiori
the right to oppose the use of that trade mark, in accordance with the fourth condition set out in paragraph 27 above.
38. The applicant argues that, under French law, the protection of the business name only covers the business activities actually pursued, particularly where the activities mentioned in the objects are defined too broadly.
39. OHIM considers that, under French law, the extent of the protection of the business name is defined by the wording of the specific business activities in the objects, unless that wording is excessively broad or unclear, in which case the extent of the protection is limited to the activities actually pursued by the company in question.
40. The intervener essentially submits that the protection of the business name covers all business activities mentioned in the objects of the company, even if those objects are formulated in broad terms, irrespective of the activities actually pursued. The intervener further states that the protection also covers business activities falling within economic sectors in which the proprietor of the business name does not yet operate, but which are related to the economic sectors mentioned in the objects of the company.
41. According to the interpretation of Article L. 711-4(b) of the IPC proposed by the Board of Appeal in the contested decision, the protection enjoyed by a business name extends to, as a matter of principle, all of the business activities covered by the objects of the company, but that in cases where the objects are vague or the activities pursued are not covered by them, the protection is limited to the activities actually and specifically pursued.
42. For the purpose of that interpretation, the Board of Appeal relied on the relevant French case-law as of the date of adoption of the contested decision, namely 1 June 2011. This case-law is not consistent and gave rise to controversy in specialised legal literature, to which the parties extensively referred before both OHIM and the Court.
43. That conflicting case-law as well as the controversy it generated in legal literature was refocused by the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above). In that judgment, which was delivered after the adoption of the contested decision, the court held that ‘the protection [enjoyed] by the business name only covers the business activities actually pursued by the company and not those listed in its articles of association’.
44. Contrary to the claims made by OHIM and the intervener in their additional written observations submitted on 24 and 25 February 2014, respectively, the principle set out in the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above) is completely unambiguous as to the limits of the protection conferred on a business name and is intended to be applied generally. It is true that the case leading to that judgment did not involve an appeal lodged on the basis of Article L. 711-4 of the CPI, but rather the annulment of a trade mark on the ground of fraud in the filing of the application for registration and a claim for unfair competition. However, the passage cited in paragraph 43 above appears in the section of the judgment rejecting a plea in law relied on against the annulment on the ground of fraud in the filing of the application for registration of the trade mark cœur de princesse, alleging that the trade mark simply reproduced the business name of the appellant company, which predated the placement on the market of dolls under the name ‘cœur de princesse’ by the company Mattel France. Those are the circumstances in which the French Cour de cassation formulated that passage, before pointing out that the goods and services covered by the trade mark cœur de princesse went far beyond the business activities that had actually been pursued by the company concerned, thereby dismissing as irrelevant the plea in law raised by it. To conclude, this passage does not therefore contain any restriction, in either its wording or in its factual or procedural context, which could lead to the belief that its application is restricted to the individual circumstances of the case considered.
45. Furthermore, contrary to the opinion of OHIM, the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above) may be taken into account by the Court in its review of the lawfulness of the contested decision, even though it postdates that decision.
46. Leaving aside the considerations of a procedural nature referred to in paragraphs 23 and 24 above, it should be observed, first, that this judgment did not depart from precedent but simply clarified a disputed legal issue. As demonstrated by the numerous previous judgments of French courts produced by the parties before OHIM and the Court, the case-law of the lower courts prior to the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above), although not consistent, supported the conclusion that the protection of the business name was limited to the business activities actually pursued by the company in question.
47. Second, even if it were to be considered that the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above) represented a departure from precedent, as a rule such departures apply retroactively to existing situations.
48. That principle is justified on the ground that the case-law interpretation of a rule at a given point in time cannot differ depending on when the facts under consideration took place and no one can rely on an acquired right to case-law set in stone. Whilst it is true that this principle may be applied more flexibly, in that, in exceptional circumstances, the courts may deviate from it in order to modify the effect in time of the retroactivity of a departure, the retroactivity of departures remains the rule. In this instance, the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above) does not contain any modification or restriction in that respect.
49. It should be added that a similar principle is applied by the European Union Courts (Joined Cases C‑367/93 to C‑377/93 Roders and Others
[1995] ECR I‑2229, paragraphs 42 and 43).
50. Therefore, even though the judgment of the French Cour de cassation of 10 July 2012 (paragraph 20 above) is, as such, a new matter of fact, it simply sets out French law as it should have been applied by the Board of Appeal in the contested decision, dated 1 June 2011, and as it should be applied by the Court, in accordance with the principle recalled in paragraph 29 above.
51. It follows that, in the present case, the protection of the business name Forge de Laguiole exclusively covers the business activities actually pursued by the intervener as of the date of the application for registration of the trade mark LAGUIOLE, that is 20 November 2001.
52. Consequently, the first pillar of the reasoning of the Board of Appeal, based on the business activities specified in the objects of the intervener, cannot justify the contested decision, unless it is shown that those activities were actually pursued.
53. It therefore remains for the Court to examine the substance of the second pillar of the reasoning of the Board of Appeal, based on the business activities actually pursued by the intervener.
Business activities actually pursued by the intervener before the date of filing of the application for registration of the trade mark LAGUIOLE
54. It is common ground in the present case that the intervener is active in the manufacture and sale of cutlery.
55. According to the findings of the Board of Appeal, the intervener also proved that it had diversified its business into sectors other than the cutlery sector, before the date of filing of the application for registration of the trade mark LAGUIOLE (namely 20 November 2001).
56. In that regard, the applicant submits, first, that the intervener’s business is, in actual fact, limited to trading in knifes, the alleged diversification consisting in the marketing of knives equipped with an accessory, and, second, that in any event such diversification largely postdates the date of filing of the application for registration of the trade mark LAGUIOLE.
57. OHIM submits that the business areas of a company are defined in relation to the customers at whom it aims its goods or services. Knives equipped with an accessory are directed at a different kind of customer than ordinary knives, which is evidenced by the difference in the distribution channels of the various knives equipped with an accessory. Furthermore, the diversification of the intervener’s business into sectors other than the cutlery sector began before the date of filing of the application for registration of the trade mark LAGUIOLE.
58. The intervener also states that a product may have two separate functions, and that its function as a knife does not take away its function as an accessory.
59. As regards proof of the diversification of the intervener’s business into sectors other than the cutlery sector, in paragraph 94 of the contested decision the Board of Appeal relied on a number of documents produced by the intervener before OHIM, documents which predate the filing of the application for registration of the trade mark LAGUIOLE, namely:
– the price list of the intervener of 1 January 2001 (document 38.1), which refers to knives with different accessories (namely a corkscrew, awl, bottle-opener, cigar cutter, pipe tamper and key ring), ‘forks’ and the ‘Couteau de chasse’ (hunting knife) model;
– two invoices from 15 October 1998 and 30 March 2000, addressed to customers in Luxembourg and Austria, mentioning the ‘Sommelier’ model, including corkscrew and bottle-opener, as well as several ‘Relève-pitch’ (divot repair tools), the ‘Laguiole du routard’ model and a leather ‘sheath’;
– an invoice from 22 November 2000, addressed to a customer in France, mentioning a ‘fork’, as well as the ‘Sommelier’ and ‘Calumet’ models, the latter of which includes a scraper blade, pipe tamper, pin and ‘case’.
60. It should be noted, first, that none of the documents mention ‘gift sets’ and ‘boxes’. On the other hand, at the foot of some pages of the intervener’s price list of 1 January 2001, the following words appear: ‘The knives are delivered with a gift package and a certificate of origin’. The documents taken into account by the Board of Appeal therefore refer to the marketing by the intervener of gift packages to be used solely to package its own goods and not as stand-alone goods. Accordingly, the Board of Appeal was wrong to consider, in paragraph 93 of the contested decision, that the intervener had offered ‘gift sets’ and ‘boxes’ for sale as part of the diversification of its business into the sector of ‘other accessories’.
61. Second, the ‘Laguiole du routard’ model is a folding knife, without any accessory. Similarly, according to the description appearing in the price list of 1 January 2001, the ‘Couteau de chasse’ model is a ‘[n]on-folding model, delivered with a leather case’. Consequently, these models cannot be used to demonstrate a diversification of the intervener’s business into sectors other than the cutlery sector, even if they are intended to be used in the context of ‘leisure’ or by hunters, as the Board of Appeal claimed in paragraph 93 of the contested decision.
62. Third, the ‘sheaths’ and ‘cases’ referred to in the invoices and the price list are, by their design and presentation, exclusively intended to hold the knives manufactured by the intervener. In addition, they could, if necessary, be used to hold other knives, depending on the size and shape of those knives, but not to hold goods unrelated to cutlery. Those sheaths and cases are also sold exclusively together with the knives and are not sold separately. In those circumstances, it must be considered that they are simply accessories to the cutlery marketed by the intervener, do not bear the hallmarks of a wholly separate range of goods and, therefore, cannot be used to demonstrate a diversification of the intervener’s business into sectors other than the cutlery sector.
63. Fourth, forks do not clearly fall within the scope of cutlery. However, the marketing of forks does not prove that the intervener pursued a business activity in the entire ‘tableware’ sector. Whilst it is true that forks could be viewed as falling within ‘tableware’, that category is too broad and covers groups of goods which are too heterogeneous to be able to be compared, for the purpose of assessing their similarity, with the goods and services covered by the trade mark LAGUIOLE. By contrast, the marketing of forks demonstrates a specific and real diversification of the intervener’s business into forks and spoons in general, as a sub-category of ‘tableware’ (see, by analogy, Case T‑256/04 Mundipharma
v OHIM — Altana Pharma (RESPICUR)
[2007] ECR II‑449, paragraph 23).
64. Fifth, as regards various (other) articles consisting in a knife with one or two accessories (corkscrew, awl, bottle-opener, cigar cutter, pipe tamper, key ring, divot repair tool), the Board of Appeal essentially considered that these multifunctional articles demonstrated the diversification of the intervener’s business into sectors other than the cutlery sector.
65. As the applicant correctly points out, the multifunctional articles marketed by the intervener are not characterised by the function of the accessory and continue to be knives despite the presence of one or two accessories. The addition of different accessories does not alter their nature as goods falling within the cutlery sector.
66. It should be recalled that, in the multifunctional goods marketed by the intervener, the knife has a dominant role and determines the nature of the product as a whole, both as regards the materials used and its entire presentation, which is indeed made clear in the price list of 1 January 2001. It is apparent from this document that the intervener itself regarded those goods as knives. Thus, the model including a corkscrew and bottle-opener appears in the price list under the name ‘Couteau Sommelier-Décapsuleur’ (sommelier bottle-opener knife) and the model including a divot repair tool appears under the name ‘Couteau du Golfeur’ (golfer’s knife). Furthermore, the parts of these products other than the blade, such as the awl and corkscrew, are expressly displayed in the price list as ‘Accessories’, the composition of the blade and of the other accessories being specified separately, with emphasis placed on the quality of the steel of the blade (the ‘Calumet’ model, with scraper blade, pin and pipe tamper is an exception in that regard). Lastly, as mentioned in paragraph 60 above, at the foot of some pages containing models with accessories, the following words appear: ‘The knives are delivered with a gift package and a certificate of origin’.
67. Contrary to the intervener’s claims, the customers at whom the multifunctional goods in question are aimed comprise not only golfers or smokers in general, but purchasers of cutlery who also play golf or smoke, or golfers or smokers with an interest in cutlery. That applies both from a functional perspective (a divot repair tool or cigar cutter forming part of a knife is less manageable and practical than the same implement without the knife, especially if the knife is a high-end product of a certain size, as is the case with the intervener’s goods) as well as from a financial perspective (multifunctional goods are considerably more expensive than the accessory alone) or even from an image perspective (a smoker or golfer who is not interested in cutlery will not normally think of the intervener’s goods when shopping for articles for smokers or for golf articles, but will opt for specialist producers in those sectors).
68. OHIM’s argument that the business sectors of a legal person are above all defined by the markets at which its goods or services are aimed must therefore be rejected. The multifunctional goods marketed by the intervener are not specifically directed at persons unrelated to the target audience of goods falling within the cutlery sector, but to smokers or golfers who are also interested in those goods. In contrast to the Board of Appeal’s submissions in paragraphs 96 and 97 of the contested decision, the fact that the multifunctional goods marketed by the intervener were sold not only by cutlers but also by gunsmiths, tobacconists’ shops, shops specialising in writing articles, shops dealing in ‘gifts — tableware’, department stores and other undertakings is not capable of altering the nature of these articles as goods falling within the cutlery sector.
69. Sixth, as regards the ‘manufacture and sale of all … gift articles and souvenirs’, referred to in the intervener’s objects, as a rule, all of the goods marketed by the intervener may be used as gifts or souvenirs, as the applicant rightly pointed out. Furthermore, as observed in paragraph 60 above, at least some of the intervener’s goods are delivered in gift packages, which tends to confirm their possible intended use as gifts. It follows that the intervener is indeed active in the field of marketing gift articles.
70. However, the intervener failed to demonstrate that it produced or marketed gift articles or souvenirs not falling within the scope of cutlery or of forks and spoons. Its business activity relating to gifts and souvenirs is clearly limited to offering its usual products, falling within the cutlery sector or the fork and spoon sector, in gift packages. Therefore, even though the intervener demonstrated that it pursued a business involving the ‘manufacture and sale of all gift articles and souvenirs’, that business is limited to gifts and souvenirs falling within the cutlery sector or the fork and spoon sector.
71. Consequently, in contrast to the Board of Appeal’s finding in paragraph 93 of the contested decision, the diversification of the intervener’s business into sectors other than the cutlery sector, before 20 November 2001, was not demonstrated by ‘scissors’, ‘tableware’ (except forks and spoons), ‘homeware’, ‘the wine sphere’, articles for smokers, articles for golfers, articles for hunters, leisure time or accessories, such as gift sets, cases and boxes.
72. By contrast, a diversification of the intervener’s business into sectors other than the cutlery sector is evidenced by ‘forks and spoons’ covering the ‘forks’ referred to in the price list of 1 January 2001, and by ‘gift articles and souvenirs’, to the extent that these goods fall within the cutlery sector or the fork and spoon sector. Thus, it is only in relation to these activities that the intervener can assert the protection of its business name with regard to the trade mark LAGUIOLE.
73. Consequently, the contested decision should be annulled in so far as the Board of Appeal held that there was a likelihood of confusion within the meaning of Article L. 711-4 of the IPC, as regards ‘scissors’ and ‘all tableware-related articles’, as well as ‘all … gift articles and souvenirs’, to the extent that these articles do not fall within the scope of cutlery or of forks and spoons.
74. Therefore, the examination which follows of the likelihood of confusion within the meaning of Article L. 711-4 of the IPC will only cover the manufacture and sale of all articles falling within the cutlery sector or the fork and spoon sector, as well within the gift and souvenir sector, to the extent that these goods fall within those sectors.
Likelihood of confusion
75. It should be observed, as a preliminary point, that in accordance with the case-law cited in paragraph 29 above, the condition that the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark must be assessed in the light of the criteria set by the law governing the earlier sign relied on, namely French law.
76. Pursuant to Article L. 711-4 of the IPC (reproduced in paragraph 36 above), the proprietor of an earlier business name is entitled to prohibit the use of a subsequent trade mark if ‘there is a likelihood of confusion on the part of the public’.
77. As OHIM correctly points out, given the nature of the goods covered by the trade mark LAGUIOLE, the relevant public is the general public in France, with an average level of attention.
78. According to French case-law, the assessment of the likelihood of confusion depends on several factors including the degree of similarity (visual, aural and conceptual) between the signs in question, the degree of similarity between the economic sectors covered by the signs and the more or less high level of distinctiveness of the earlier sign (CA Versailles, judgment of 25 October 2001, Flex’cible
v SOS Flexibles and Sofirop, and TGI Paris, judgment of 8 July 2011, RG 09/11931).
79. The likelihood of confusion is even more significant when the earlier business name is highly distinctive, particularly on account of its familiarity to the public. The harm arising from the likelihood of confusion does not result solely from the luring away of customers. It can also take the form of detriment to standing or reputation (CA Paris, judgment of 13 October 1962, Ann. propr. ind. 1963, p. 228).
80. Since the resolution of a conflict between a trade mark and a business name depends on the existence of a likelihood of confusion, if the trade mark registration covers several goods or services of a different nature, its annulment will be distributive and will only affect the goods or services in respect of which a likelihood of confusion with the business of the legal person has been found to exist (CA Paris, judgment of 28 January 2000, Revue Dalloz, 2001, p. 470).
Similarity between the economic sectors covered by the business name Forge de Laguiole and the trade mark LAGUIOLE
81. According to French case-law, in order to determine whether the economic sectors covered by the business name Forge de Laguiole and the trade mark LAGUIOLE are similar, all of the relevant factors characterising the relationship between the goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with one another or are complementary (TGI Paris, judgment of 25 November 2009, RG 09/10986).
82. In the present case, the Board of Appeal found that the goods covered by the LAGUIOLE trade mark significantly encroached upon the intervener’s business sectors or were situated in related business sectors, a finding which it explained in detail in paragraphs 107 to 114 of the contested decision.
83. However, that finding stems from an examination which took into account all of the business sectors specified in the objects of the intervener. As observed in paragraphs 71 to 74 above, in respect of the likelihood of confusion, account should only be taken of the intervener’s business in the cutlery sector and the fork and spoon sector, as well as in the gift and souvenir sector, to the extent that these goods fall within the cutlery sector or the fork and spoon sector.
84. In those circumstances, the Board of Appeal’s findings in paragraphs 107 to 114 of the contested decision must be reviewed in the light of this restriction on the business sectors protected by the business name Forge de Laguiole.
– The relationship between ‘saws, razors, razor blades; nail files and nail nippers, nail-clippers’ as well as ‘manicure sets, shaving cases’ in Class 8, ‘paper-cutters’ in Class 16 and ‘shaving brushes, fitted vanity cases’ in Class 21, and the intervener’s business
85. As regards ‘saws, razors, razor blades; nail files and nail nippers, nail-clippers’ in Class 8, as well as ‘paper-cutters’ in Class 16, the Board of Appeal correctly considered that these were cutting implements falling within the ‘cutlery’ sector referred to in the intervener’s objects. There is therefore a high degree of similarity between these goods and the intervener’s business. Similarly, ‘manicure sets, shaving cases’ in Class 8, as well as ‘shaving brushes, fitted vanity cases’ in Class 21, are complementary or accessory to those cutting implements, in that they are used together and are generally sold together in the same type of outlets and to the same customers. These goods and the intervener’s business are therefore similar.
– ‘Hand tools and implements (hand-operated)’ and ‘screwdrivers’ in Class 8
86. As regards ‘hand tools and implements (hand-operated)’ and ‘screwdrivers’ in Class 8, covered by the trade mark LAGUIOLE, it should be noted that this definition includes knives.
87. The arguments put forward by the applicant and the intervener in their additional written observations submitted on 9 and 8 April 2014, respectively, do not cast doubt on that conclusion.
88. First, the fact that the heading of Class 8 of the Nice Classification is worded ‘Hand tools and implements (hand-operated); cutlery; side arms; razors’ does not mean that there is no overlap between these different categories. Indeed, the purpose of the Nice Classification is purely administrative and seeks only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category, as is apparent, in particular, from Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).
89. Thus, in its decision of 14 May 2003 concerning the trade mark LAGUIOLE, the OHIM examiner rightly held that ‘it [was] common ground that a bladed weapon [was] “a hand weapon whose action results from a metal part”’ and that ‘this term therefore [covered] knives’, although these two categories of goods appeared in the heading of Class 8 of the Nice Classification.
90. Second, the applicant puts forward an argument based on the OHIM examiner’s decision of 14 May 2003, in that the examiner drew a distinction between ‘bladed weapons’, which he compared to knives and in respect of which he refused to register the trade mark due to its descriptive character, and ‘hand tools and implements (hand-operated)’, in respect of which he did register the trade mark.
91. It should be noted in this respect that the OHIM examiner’s decision of 14 May 2003 cannot bind the Court in its assessment of the goods covered by that category (see, to that effect, Case C‑412/05 P Alcon
v OHIM
[2007] ECR I‑3569, paragraph 65, and ARTHUR ET FELICIE, paragraph 21 above, paragraph 71). Furthermore, even during the invalidity proceedings before OHIM, the applicant was aware of the fact that knives could form part of the category of ‘hand tools and implements (hand-operated)’, as on several occasions he stated that he was prepared to clarify the wording of the list of goods included, in particular, in Class 8, covered by the trade mark LAGUIOLE, as follows: ‘Hand tools and implements (hand-operated), except for knives’. However, the decisions of the Cancellation Division and the Board of Appeal were based on grounds which did not require this question to be examined and, indeed, the applicant did not clarify the list of goods in that way.
92. It should therefore be concluded that ‘hand tools and implements (hand-operated)’, in so far as they include knives, are identical to the intervener’s business in the cutlery sector — and not only to the ‘Laguiole du routard’ model, as the Board of Appeal found.
93. On the other hand, in contrast to the Board of Appeal’s findings, ‘screwdrivers’ in Class 8 bear no similarity to the ‘Laguiole du routard’ model marketed by the intervener, which is simply an ordinary folding knife without any accessories.
– ‘Spoons’ in Class 8
94. As regards ‘spoons’ in Class 8, these form part of the ‘forks and spoons’ marketed by the intervener (see paragraphs 62 and 72 above) and, therefore, fall within an economic sector which is identical to one of the economic sectors covered by the business name Forge de Laguiole.
– ‘Kitchen utensils and services (tableware) of glass, porcelain and earthenware; tableware (other than cutlery) not of precious metals; corkscrews; bottle-openers, boxes of metal for dispensing paper towels; egg timers (sand glasses)’ in Class 21 and ‘household and kitchen utensils and containers of precious metal; tableware of precious metal’ in Class 14
95. As regards these goods, the Board of Appeal linked them with ‘tableware’ and concluded that they encroached upon the intervener’s business in this field.
96. As observed in paragraph 63 above, the category of ‘tableware’ is too broad and vague to be used as a point of reference for the purpose of establishing the existence of a likelihood of confusion. Therefore, in contrast to the Board of Appeal’s findings, those goods bear no similarity to the economic sectors covered by the business name Forge de Laguiole.
97. However, ‘corkscrews; bottle-openers’ bear a strong similarity to the ‘Sommelier’ model, which includes a corkscrew and bottle-opener, as well as to other models of knife including a corkscrew marketed by the intervener. Even though the marketing of these products, as ‘derivatives’ of products falling within the cutlery sector, does not show that the intervener diversified its business into ‘tableware’ or ‘the wine sphere’, as explained in paragraphs 65 and 69 above, the fact remains that, as individual products, they are — from the standpoint of functionality — equivalent to the ‘corkscrews; bottle-openers’ covered by the trade mark LAGUIOLE. This fact, in addition to marketing in the same shops, is sufficient to conclude that the goods fall within an economic sector which is identical to one of the economic sectors covered by the business name Forge de Laguiole.
– ‘Precious metals and their alloys’, ‘precious stones’ and ‘boxes, candlesticks’ in Class 14
98. As regards ‘precious metals and their alloys’ and ‘precious stones’ in Class 14, the Board of Appeal considered that these goods were ‘greatly valued’ for high-end scissors and for numerous items falling with the field of ‘tableware’ and, therefore, strongly complemented the intervener’s business. Furthermore, ‘boxes, candlesticks’ in Class 14 would be sold in the same type of establishments specialising in ‘tableware and decoration’ as some of the articles allegedly marketed by the intervener.
99. First of all, it should be observed that, in the present case, ‘scissors’ and ‘tableware’ do not form part of the economic sectors covered by the business name Forge de Laguiole (see paragraphs 73 and 74 above). Secondly, the mere fact that precious metals and precious stones may be used in the intervener’s cutlery-related business does not lead to the conclusion that they fall within an economic sector which is similar to one of the economic sectors covered by the business name Forge de Laguiole, in the minds of French consumers. Unlike cutlery, precious metals and precious stones are essentially intended for the manufacturing industry and not for end consumers. The use of such materials in a knife will generally be for decorative and accessory purposes only, and will not be linked to the functionality of the knife.
– ‘Leather and imitations of leather’ and ‘trunks, suitcases and travelling bags’ in Class 18, as well as ‘boxes’
100. As regards ‘leather and imitations of leather’ and ‘suitcases and travelling bags’ in Class 18, the Board of Appeal observed that they were commonly used to make sheaths, cases and boxes, marketed by the intervener, or could be used for the packaging and transportation of goods falling within the cutlery sector, especially where luxury goods intended to be given as ‘gift items’ were concerned. It therefore concluded that the goods complemented the intervener’s business and ‘were wholly in keeping with the development of its range of accessories’.
101. First, it should be remembered that, in the present case, ‘gift items’ are part of the economic sectors covered by the business name Forge de Laguiole only in so far as cutlery or forks and spoons are concerned (see paragraphs 71 to 74 above). Second, the fact that ‘leather and imitations of leather’ may be used as raw materials to make the sheaths and cases marketed by the intervener with some of its knives is not sufficient to establish a link of similarity in relation to the intervener’s business in the cutlery sector, given that, inter alia, the raw materials are directed at producers, while cutlery is aimed at end consumers. Third, in respect of, in particular, the ‘boxes’ allegedly marketed by the intervener, the documents on which the Board of Appeal based its findings as regards the intervener’s business as of 20 November 2001 (see paragraph 59 above) do not refer to such articles and, in any event, since they were exclusively intended to hold the cutlery of the intervener, they can only be of an accessory nature, used as packaging even, in relation to the intervener’s business in the cutlery sector.
102. It follows that ‘leather and imitations of leather’ and ‘trunks, suitcases and travelling bags’ in Class 18 are not similar to the intervener’s business in the cutlery sector.
– ‘School supplies; pencils, pencil lead holders, rubber erasers; envelopes; binders; albums, books, almanacs, pamphlets, writing or drawing books, catalogues; calendars, lithographs, posters’ in Class 16
103. The Board of Appeal explained that these goods were usually sold in shops specialising in writing articles and would be used in the same context as the intervener’s ‘paper-cutters’, namely for writing and reading, and, therefore, encroached upon this business sector of the intervener. Furthermore, all of these goods are commonly used in the course of trade for communications between undertakings and their customers and for their business relations, or are used as corporate gifts. In so far as the printed matter covered by the trade mark LAGUIOLE is liable to create, due to its content, a likelihood of confusion with the business name Forge de Laguiole, that trade mark should be annulled.
104. It should be recalled, first, that in contrast to the Board of Appeal’s findings, the link between the aforementioned goods and the ‘paper-cutters’ marketed by the intervener is too tenuous to give rise to a similarity. The link created by the partial overlap in the points of sale is not sufficient in itself to render paper cutters similar to a group of goods which instead fall within the stationery sector, given that shops specialising in writing articles generally offer a wide range of different goods targeting a non-specialised audience. In addition, the use of the paper cutters marketed by the intervener will normally be limited to opening envelopes. That can only therefore give rise to a weak link of similarity, due to a use which is complementary, with ‘envelopes’, but not with the other goods referred to in paragraph 103 above. Second, the mere fact that all of these goods are commonly used in communications between undertakings and their customers and in other business relations, or are used as corporate gifts, does not create any similarity with the intervener’s business in the cutlery sector, given that, on account of their intended use, they are entirely different from that business. Third, the Board of Appeal’s assertion regarding the likelihood of confusion liable to result from the printed matter covered by the trade mark LAGUIOLE will be dealt with in paragraph 165 below, as part of the overall assessment of the likelihood of confusion.
– Various goods described as ‘gift articles’ in Classes 14, 18 and 20
105. As regards ‘jewellery; jewel cases of precious metal; chronometric instruments, cuff links, tie pins, ornamental novelty pins; key rings; purses of precious metal; watches and watch straps’ in Class 14, ‘walking sticks; handbags; beach bags; bags, travelling sets and travelling trunks; pocket wallets; card cases (notecases), attaché cases; briefcases; key cases (leatherwear); purses, not of precious metal’ in Class 18, and ‘frames, works of art or decorative items of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’ in Class 20, the Board of Appeal simply found that these were ‘gift articles’ which were very commonly sold in all kinds of shops or given as corporate gifts, concluding that they could, therefore, be found in the same establishments as those in which the intervener marketed its own goods.
106. It should be observed that the intervener’s business consisting in the ‘manufacture and sale of … gift articles’ forms part of the economic sectors covered by the business name Forge de Laguiole only in so far as cutlery or forks and spoons are concerned (see paragraphs 71 to 74 above). However, the goods referred to in the previous paragraph do not fall within the cutlery sector or the fork and spoon sector, nor are they related to that field. Furthermore, even if the aforesaid goods are sold as gifts in the same shop alongside the cutlery marketed by the intervener, that fact is not capable of creating a similarity between the former and the latter, given that gift shops offer a wide range of heterogeneous goods aimed at the general public.
– ‘Golf gloves’ and ‘sporting articles’ in Class 28, ‘cigar cases’ in Class 14, and ‘matches, lighters for smokers; cigar and cigarette boxes, not of precious metal; cigar cutters; pipes; pipe cleaners’ in Class 34
107. As regards ‘golf gloves’ and ‘sporting articles’ in Class 28, ‘cigar cases’ in Class 14, and ‘smokers’ articles; matches, lighters for smokers; cigar and cigarette boxes, not of precious metal; pipes’ in Class 34, the Board of Appeal considered that they were aimed at the same customers, would be purchased in the same shops and would be used in the same context as some of the ‘gift articles’ developed by the intervener. That would be the case with, for example, the ‘Couteau du golfeur’ model, marketed by the intervener, in relation to ‘golf gloves’ or other ‘sporting articles’, as well as with the ‘Calumet’ model (with scraper blade, pin and pipe tamper) and the cigar cutter, marketed by the intervener, in relation to the ‘cigar cases’ and ‘matches, lighters for smokers; cigar and cigarette boxes; pipes’ covered by the trade mark LAGUIOLE.
108. It is sufficient to note, in that regard, that the intervener’s business consisting in the ‘manufacture and sale of … gift articles’ forms part of the economic sectors covered by the business name Forge de Laguiole only in so far as cutlery or forks and spoons are concerned (see paragraphs 71 to 74 above), which is not the case for the goods referred to in paragraph 107 above.
109. However, ‘cigar cutters’ and ‘pipe cleaners’ in Class 34 bear similarities to the ‘coupe-cigare’ (cigar cutter) model and the ‘Calumet’ model (with scraper blade, pin and pipe tamper), respectively, marketed by the intervener. Even though the marketing of these models, as ‘derivatives’ of cutlery, does not show that the intervener diversified its business into ‘smokers’ goods’ in general, as explained in paragraphs 65 to 68 and 71 above, the fact remains that, as individual products, they are — from the standpoint of functionality — identical to the ‘cigar cutters’ and ‘pipe cleaners’ covered by the trade mark LAGUIOLE. This fact, in addition to marketing in the same shops, is sufficient to conclude that there is a strong similarity.
110. By contrast, ‘golf gloves’ in Class 28 bear no similarity to the ‘Couteau du golfeur’ model (with divot repair tool) marketed by the intervener. It is true that the latter may be used in conjunction with the ‘golf gloves’ covered by the trade mark LAGUIOLE. Nevertheless, there is no relationship of complementarity justifying a similarity in that case, since the goods may be used separately and are normally designed independently of each other and not according to criteria deriving from joint use — unlike what might be expected from, for instance, golf gloves and golf clubs.
– Services in Class 38
111. As regards ‘telecommunications’ services and neighbouring sectors in Class 38, the Board of Appeal found, in paragraph 114 of the contested decision, that they bear no similarity to the intervener’s business. That finding, which favours the applicant and was not disputed by the intervener, is not really part of the subject-matter of the present dispute and, therefore, it is not necessary for the Court to examine it.
– Conclusion on the similarity between the economic sectors covered by the business name Forge de Laguiole and the trade mark LAGUIOLE
112. To conclude, a finding of identicalness must be made, in relation to the sectors covered by the business name Forge de Laguiole, in respect of ‘hand tools and implements (hand-operated)’ and ‘spoons’ in Class 8, and a finding of a high degree of similarity must be made, in relation to the intervener’s business, in respect of ‘saws, razors, razor blades; nail files and nail nippers, nail-clippers’ in Class 8, ‘paper-cutters’ in Class 16, ‘corkscrews; bottle-openers’ in Class 21, and ‘cigar cutters’ and ‘pipe cleaners’ in Class 34.
113. Second, there is an average degree of similarity, in relation to the sectors covered by the business name Forge de Laguiole, in respect of ‘manicure sets, shaving cases’ in Class 8, and ‘shaving brushes, fitted vanity cases’ in Class 21.
114. Third, there is a low degree of similarity, in relation to the sectors covered by the business name Forge de Laguiole, in respect of ‘envelopes’ in Class 16.
115. Fourth and last, there is no similarity, in relation to the sectors covered by the business name Forge de Laguiole, in respect of all of the other goods and services covered by the trade mark LAGUIOLE.
Similarity of the conflicting signs
116. The Board of Appeal considered that the word ‘laguiole’, although descriptive and thus non-distinctive for knives — as the cour d’appel de Paris (Court of Appeal, Paris) held in its judgment of 3 November 1999 ( G.T.I.-G.I.L. Technologies internationales v Commune de Laguiole and Association Le couteau de Laguiole ) — was nevertheless the dominant element, or at least the codominant element, of the business name Forge de Laguiole, even where that name was used for knives. Therefore, according to the Board of Appeal, in an overall appraisal, the conflicting signs displayed certain aural, visual and conceptual similarities which could not be offset by the mere addition of the generic expression ‘forge de’.
117. The applicant argues, in essence, that the conflicting signs display visual, aural and conceptual differences.
118. OHIM submits that the word ‘laguiole’ is the dominant element of the business name Forge de Laguiole, despite its generic character. Given that the trade mark LAGUIOLE is reproduced in full in that business name, the degree of similarity between the two signs is high.
119. The intervener submits that the conflicting signs display visual, aural and conceptual similarities.
120. As a preliminary point, it should be examined whether — as the Board of Appeal considered, followed by OHIM and the intervener — the word ‘laguiole’ is the dominant element of the business name Forge de Laguiole, despite its descriptive, even generic, character for knives, as the cour d’appel de Paris held in its judgment of 3 November 1999 (paragraph 116 above), and its descriptive character of the place of establishment and production of the intervener.
121. First, it is true, as the Board of Appeal states in paragraph 119 of the contested decision, that the descriptive and non-distinctive character of the word ‘laguiole’ for knives does not necessarily mean that this word is also descriptive and non-distinctive for goods other than knives.
122. However, it must be borne in mind that the present examination of the likelihood of confusion relates exclusively to the manufacture and sale of cutlery and of forks and spoons, as well as of gifts and souvenirs, in so far as they include cutlery or forks and spoons (see paragraph 74 above). The business actually carried on by the intervener is centred almost entirely in the area of cutlery, including some articles incorporating other functions, over and above those of a knife, and the marketing of other goods — particularly forks and spoons — is of an accessory, even marginal, nature. This is apparent from the goods appearing in the intervener’s price list of 1 January 2001 and from the various press articles contained in the press book produced by the intervener — in so far as they clearly relate to the period prior to 20 November 2001 — in which the intervener consistently presents itself as a cutler specialising in the production of Laguiole-style knives, without reference to the pursuit of any other business. Whilst it is indeed the case that some of these articles allude to the intentions of those managing the intervener to diversify the business, the intervener has not shown, as observed above, that those intentions were acted upon before 20 November 2001.
123. In those circumstances, it must be concluded that the word ‘Laguiole’ is of a descriptive, even generic, character for the entirety of the intervener’s business activities of relevance to the assessment of the likelihood of confusion.
124. Second, the Board of Appeal was correct to consider that a descriptive element of a sign could nevertheless be its dominant or codominant element if, for example, the other elements were equally descriptive or appeared to be just as weak or even weaker. It is true that the element ‘Forge de’ in itself has a descriptive character, since it relates to business activities in the cutlery sector and in the fork and spoon sector pursued by the intervener. However, in contrast to the findings of the Board of Appeal, that element is not ‘semantically dependent on the name “Laguiole”, which identifies the specific forge in question’. The descriptive element of the place — and the business pursued — is not dominant with respect to the descriptive element of the nature of the establishment. Accordingly, it is not possible to identify a dominant element in the business name Forge de Laguiole, wholly comprised of elements of a descriptive, even generic, character, in relation to the business and/or place of establishment of the intervener.
125. Third, as regards the visual comparison, the business name Forge de Laguiole comprises three words forming a group of fifteen letters, while the trade mark LAGUIOLE has only eight letters. The element ‘laguiole’ is indeed present in each of the conflicting signs; however, it is found at the end of the aforementioned business name, so that the element ‘forge de’ at the forefront diminishes the visual impression created by the partial overlap. Accordingly, it must be concluded that there is an average visual similarity between the conflicting signs.
126. Fourth, from an aural standpoint, the business name Forge de Laguiole has five, or even six syllables, whilst the trade mark LAGUIOLE has two, or even three, depending on the pronunciation of ‘laguiole’. As regards the effect of the partial overlap of the conflicting signs, the observations on visual similarity apply mutatis mutandis
and, therefore, it must be concluded that there is an average aural similarity.
127. Fifth, in respect of the conceptual comparison, the business name Forge de Laguiole brings to mind a workshop located in the commune of Laguiole (France), as the applicant correctly pointed out, but, at the same time, it also brings to mind a workshop producing Laguiole-style knives. The trade mark LAGUIOLE, for its part, brings to mind both the commune of Laguiole and Laguiole-style knives. Therefore, the Board of Appeal correctly found that, in so far as the conflicting signs referred to the same concepts, namely the town or the knife, they were similar from a conceptual perspective. The Court even considers that the degree of conceptual similarity should be classified as high.
The highly distinctive character of the business name Forge de Laguiole due to the public’s recognition of it
128. In paragraph 130 of the contested decision, the Board of Appeal considered that the business name Forge de Laguiole had a strong distinctive character on account of the prestige, even the reputation, of the intervener in France and abroad for the quality of its knives.
129. The applicant considers that there is nothing in the documents before the Court to illustrate the alleged renown of the business name Forge de Laguiole and submits that it is Laguiole-style knives which are well known, not the designation ‘Forge de Laguiole’.
130. OHIM submits that the business name Forge de Laguiole has acquired a reputation in the field of cutlery and the intervener asserts that it is widely renowned in France and abroad.
131. As a preliminary point, it should be remembered that French trade mark law is governed by the directives approximating the laws of the Member States relating to trade marks (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), replaced by 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)). Consequently, the principle that the more distinctive the earlier mark, the greater will be the likelihood of confusion and, therefore, marks with a highly distinctive character, for example because of the public’s recognition of them, enjoy broader protection than marks with a less distinctive character (Case C‑251/95 SABEL
[1997] ECR I‑6191, paragraph 24; Case C‑39/97 Canon
[1998] ECR I‑5507, paragraph 18; and Case C‑342/97 Lloyd Schuhfabrik Meyer
[1999] ECR I‑3819, paragraph 20), is also applicable in French trade mark law. As is apparent from the case-law cited in paragraph 79 above, this principle has also been applied in French law when assessing the likelihood of confusion in relation to a business name, since even before the entry into force of the directives approximating the laws of the Member States on trade marks.
132. Thus, the existence of an unusually high level of distinctiveness as a result of the public’s recognition of a business name on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the business name within the relevant section of the public, that it has a highly distinctive character because of the public’s recognition of it. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a business name and its distinctive character in that the more the business name is recognised by the target public, the more its distinctive character is strengthened. In order to assess whether a business name has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the company in question; how intensive, geographically widespread and long standing use of the business name has been; the amount invested by the undertaking in promoting the business name; the proportion of the relevant section of the public which, because of the business name, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, by analogy, VITACOAT, paragraph 23 above, paragraphs 34 and 35 and the case-law cited).
133. In those circumstances, in order to show in the present case that the public recognises the business name Forge de Laguiole, it must be proven that a significant proportion of the relevant public — that is, the average French consumer — is familiar with that business name.
134. In finding that the business name Forge de Laguiole was highly distinctive, because of the prestige and reputation allegedly enjoyed by the intervener in France, the Board of Appeal relied on a number of documents in the proceedings before it, set out in paragraphs 63 to 66 of the contested decision.
135. The first of these documents is an article published in a French economic journal in October 2004, entitled ‘Laguiole — Une production traditionnelle devenue tendance’ (‘Laguiole — The new trend in traditional craftsmanship’).
136. It is sufficient to note that the relevant point in time for assessing the public’s recognition of the business name Forge de Laguiole is the date of the application for registration of the trade mark LAGUIOLE, namely 20 November 2001. The article in question, from 2004, contains no information capable of demonstrating that the aforementioned business name was especially familiar to the public before 20 November 2001.
137. Second, the Board of Appeal refers to a letter of 9 March 1999, wrongly indicated as dating from 20 March 1999. In that letter, the intervener’s manager confirms the existence of an ‘agreement for the manufacture of a new mould making it possible to increase output and produce higher quality goods’ and explains the financial terms.
138. It should be noted that the addressee of the letter of 9 March 1999 is not clearly identified. Furthermore, in so far as the Board of Appeal refers to that letter to substantiate its finding that the intervener had begun collaborating with a well-known restaurant owner, the letter only refers to a meeting ‘with Messrs [B. and C.]’, which is not sufficient to identify the restaurant owner in question or demonstrate that said owner was actually collaborating with the intervener or the form which that collaboration took.
139. Consequently, the letter of 9 March 1999 cannot be used to demonstrate, even indirectly, that the public recognises the business name Forge de Laguiole.
140. Third, in paragraph 65 of the contested decision, the Board of Appeal states that the intervener’s goods received a number of awards and accolades at European and international level in 1992 and 1996. In reply to a written question from the Court, OHIM stated that the Board of Appeal had relied in that regard on the information appearing in the article referred to in paragraph 135 above, on a presentation of ‘the creation strategy’ of the intervener from 2005 taken from its website (page 234 of the file in the proceedings before OHIM), and on other publications concerning the intervener (page 169 of the file in the proceedings before OHIM).
141. Page 169 of the file in the proceedings before OHIM contains an extract from an undated article in Italian which mentions the fact that the knife created by a famous designer forms part of the design collection of the Museum of Modern Art in New York (MoMA), and that the ‘Sommelier’ model won the ‘Design Plus’ award at the ‘Ambiente’ exhibition in Frankfurt in 1996.
142. The most complete list of awards and accolades can be found in the extract from the website appearing in page 234 of the file in the proceedings before OHIM, which mentions — in addition to the knife displayed at MoMA and the ‘Design Plus’ award of 1996 — the ‘Grand prix français de l’objet design’ of 1991 (without clearly stating which item received the award), the ‘Blade Magazine Award’ 1992 for a model designed by a well-known architect and the Prix européen du Design 1992 ‘for the creative approach’ of the intervener, all of which are also referred to in the contested decision.
143. The Court considers that these awards and accolades constitute evidence of the public’s recognition of the intervener’s goods and, therefore, of its business name, since the bestowal of awards and accolades on an undertaking for its goods is likely to draw the attention of the general public to that undertaking. However, it must also be borne in mind that the publicity generated by such awards is confined to a section of the public with a specific interest in design and its impact on the general public in France, which is the only relevant public in this case (see paragraph 77 above), is limited. That observation applies a fortiori
with regard to the ‘Blade Magazine Award’, given by a specialist magazine in the United States which will only be familiar to French consumers with a specific interest in the collection of knives.
144. Fourth, the Board of Appeal refers to the ‘catalogue’ appearing in ‘document 21’ produced by the intervener before OHIM as proof of the fact that the intervener constantly endeavoured to set itself apart through the quality and image of its goods, particularly by recruiting highly qualified staff and through collaborations with prestigious designers and creative artists. That document indeed refers to models designed by or created in cooperation with two well-known partners.
145. It is apparent from the documents in the case, as well as the intervener’s reply to a written question from the Court, that ‘document 21’ in fact combines three different documents, namely a leaflet distributed from 1997, a promotional document distributed from 2004 and a catalogue distributed in 2000.
146. Given that a reference to a well-known restaurant owner is only found in the 2004 promotional document and not in the other two documents, that reference cannot be used to demonstrate the existence of a collaboration with him as of 20 November 2001.
147. By contrast, the references to a famous creative artist appear in the 2000 catalogue, which therefore demonstrates that there was a collaboration with him before 20 November 2001. Furthermore, the information examined in paragraph 142 above shows that, prior to that date, there had been cooperation with a well-known architect.
148. Since these collaborations with partners enjoy, in themselves, a certain degree of prestige and reputation, they are capable of drawing the attention of a least a proportion of the public which recognises the partners in question to the intervener and its business name, under which its goods are marketed. Nevertheless, this is not enough to show that the business name was recognised by the general public.
149. Fifth, the Board of Appeal refers to an article published in a French journal in December 1999, entitled ‘Péril sur le mythe du couteau Laguiole’ (‘Threat to the legend of the Laguiole knife’).
150. The Board of Appeal considered that this article was ‘particularly eloquent as regards the reputation acquired by the [business] name Forge de Laguiole before the date of filing of the application for registration [of the trade mark LAGUIOLE]’, as it advised readers, when choosing a Laguiole knife, to trust the trade mark. The article then cites three ‘trade marks’ as being the best known, including the business name of the intervener, whose history and growth are then briefly outlined.
151. Admittedly, that article constitutes evidence of the public’s recognition of the business name Forge de Laguiole, but it is not sufficient, on its own, to demonstrate such recognition. Indeed, it must be borne in mind that the article only refers to the intervener, together with two other producers, as being the best known. However, the opinion of the author of the article is not sufficient, in itself, to draw conclusions on the degree of recognition by the general public of the aforementioned business name in the absence, in particular, of information on the circulation and distribution of the journal in which it was published.
152. Sixth, the Board of Appeal refers to an article published in a free French magazine in February 1999 entitled ‘L’Aveyron: un terroir en ébullition’ (‘L’Aveyron: a booming region’), which claimed that ‘Le Laguiole, made in Laguiole, whose market has increased twenty-fold, is starting to forge a solid reputation abroad’.
153. It should be observed, firstly, that the sentence in question, which the Board of Appeal did not quote in full, is actually worded as follows: ‘Le Laguiole, made in Laguiole, whose market has increased twenty-fold with the emergence of small workshops, is starting to forge a solid reputation abroad’. It follows that although the article expressly refers to the intervener, the sentence quoted by the Board of Appeal nevertheless relates to the production of knives in the commune of Laguiole as a whole, not only the intervener’s goods. Secondly, the sentence in issue offers a view on the reputation outside of France of knives produced in that commune and not on the recognition by the public in France of the business name Forge de Laguiole, which is the only relevant business name in this case (see paragraph 133 above).
154. In those circumstances, it must be found that the article in question constitutes, above all, evidence of the reputation of Laguiole-style knives, produced ‘ in situ ’ — although the fact that there is a long history of producing knives of this kind using traditional methods in the commune of Thiers (France), as stated in the case-law cited in paragraph 116 above, must also be taken into account — and, to a lesser extent, evidence of the reputation of the business name Forge de Laguiole.
155. To conclude, the documents put forward by the Board of Appeal indeed show that the intervener made some effort in the area of advertising and communications to make itself known to the general public in France and to stand out from its competitors by projecting an image of quality or luxury. Given that this effort was maintained over several years, it is not inconceivable that the business name Forge de Laguiole could have acquired certain recognition from the public in the field of Laguiole-style knives.
156. Nevertheless, it should also be borne in mind that some information on which the Board of Appeal relied relates to Laguiole-style knives in general rather than the business name of the intervener.
157. Furthermore, the press articles to which the Board of Appeal referred as evidence of the public’s recognition of the business name Forge de Laguiole are taken either from specialist media (such as the article mentioned in paragraph 135 above, which is aimed at business management professionals, and ‘Blade Magazine’, which is aimed at mainly American knife collectors), or from media in respect of which no evidence was produced on the extent of their circulation (such as the article mentioned in paragraph 149 above), or even from magazines that are essentially advertising handouts which, therefore, are less likely to hold readers’ attention (such as the article mentioned in paragraph 152 above). This fact also distinguishes the present case from the judgment of 16 December 2010 in Joined Cases T‑345/08 and T‑357/08 Rubinstein and L’Oréal v OHIM — Allergan (BOTOLIST and BOTOCYL), not published in the ECR, on which OHIM relied in its reply to the written questions from the Court. Although it is true that, in paragraphs 50 to 53 of that judgment, the Court relied on press articles to establish the existence of wide media coverage in relation to the goods in question, the fact remains that the media concerned had large circulations and enjoyed an international reputation.
158. Therefore, although the information taken into account by the Board of Appeal indeed constitutes evidence of a degree of recognition by the public of the business name Forge de Laguiole, it is not sufficient to demonstrate such recognition with any certainty. It is not the intervener’s advertising efforts in order to increase its public profile which are ultimately conclusive, but rather the actual recognition by the public resulting from those efforts, determined by means of the criteria set out in VITACOAT, cited in paragraph 132 above.
159. The contested decision does not contain any indications that those criteria are met in the present case, particularly as regards the proportion of the French public which recognises the business name Forge de Laguiole; the market share held by the intervener in the cutlery market in general or in the narrower market for Laguiole-style knives; the amount invested by the intervener to promote recognition of its business name by the public; the proportion of the relevant section of the public which, because of the business name, identifies the goods or services as originating from the intervener; or statements from chambers of commerce and industry or other trade and professional associations independent of the intervener. Nor are such indications apparent from the other documents in the case or, in particular, from the information provided by the intervener.
160. Accordingly, the Board of Appeal wrongly held that, as of 20 November 2001, the business name Forge de Laguiole had acquired, for knives, an unusually high level of distinctiveness because of the French public’s recognition of it.
Conclusion on the likelihood of confusion
161. To conclude, the conflicting signs display certain visual and aural similarities and a high degree of conceptual similarity. Account must be taken of the fact that the business name Forge de Laguiole has a weak inherent distinctive character, since it is comprised exclusively of elements which describe the intervener’s business. This weak distinctive character is not offset by any recognition acquired among the relevant public.
162. In the light of the identicalness, in relation to the intervener’s business, of ‘hand tools and implements (hand-operated)’ and ‘spoons’ in Class 8, as well as the high degree of similarity, in relation to the intervener’s business, of ‘saws, razors, razor blades; nail files and nail nippers, nail-clippers’ in Class 8, ‘paper-cutters’ in Class 16, ‘corkscrews; bottle-openers’ in Class 21, and ‘cigar cutters’ and ‘pipe cleaners’ in Class 34, covered by the trade mark LAGUIOLE, a likelihood of confusion must be found to exist between that trade mark and the business name Forge de Laguiole, since the relevant public could think that these goods have the same commercial origin as the cutlery and the forks and spoons marketed by the intervener.
163. Similarly, in the light of the average degree of similarity, in relation to the intervener’s activities, of ‘manicure sets, shaving cases’ in Class 8, and ‘shaving brushes, fitted vanity cases’ in Class 21, covered by the trade mark LAGUIOLE, a likelihood of confusion must be found to exist between that trade mark and the business name Forge de Laguiole, since the relevant public could think that these goods have the same commercial origin as the cutlery and the forks and spoons marketed by the intervener.
164. By contrast, given the low degree of similarity, in relation to the intervener’s business, of ‘envelopes’ in Class 16, covered by the trade mark LAGUIOLE, it must be found that no likelihood of confusion exists in that regard, since the relevant public would not think that these goods could have the same commercial origin as the cutlery and the forks and spoons marketed by the intervener.
165. Similarly, given the lack of similarity, in relation to the intervener’s business, of all other goods and services covered by the trade mark LAGUIOLE, it must be found that no likelihood of confusion exists in that regard. In particular, the Board of Appeal was wrong to find, in paragraph 111 of the contested decision, that the printed matter (albums, books, almanacs, pamphlets, catalogues, calendars, lithographs and posters in Class 16) covered by that trade mark was liable to create, ‘due to its content’, a likelihood of confusion with the business name Forge de Laguiole. It is not clear how the ‘printed matter’ covered by that trade mark, irrespective of its nature and content, could give the relevant public the impression that it had the same commercial origin as the cutlery and the forks and spoons marketed by the intervener, except where the printed matter specifically concerns the intervener’s goods. However, such a specific and exceptional situation cannot form the basis for a likelihood of confusion with regard to an entire category of goods. Otherwise, the designation of ‘printed matter’ by a trade mark displaying similarities with another trade mark would have to be regarded as presenting a likelihood of confusion in relation to all goods covered by that other trade mark.
166. Accordingly, the sole plea in law must be upheld and the contested decision must be annulled in so far as the Board of Appeal found that there was a likelihood of confusion, between the business name Forge de Laguiole and the trade mark LAGUIOLE, in respect of goods other than ‘hand tools and implements (hand-operated); spoons; saws, razors, razor blades; shaving cases; nail files and nail nippers, nail-clippers; manicure sets’ in Class 8, ‘paper-cutters’ in Class 16, ‘corkscrews; bottle-openers’ and ‘shaving brushes, fitted vanity cases’ in Class 21, and ‘cigar cutters’ and ‘pipe cleaners’ in Class 34.
167. The remainder of the action must be dismissed.
Costs
168. Under Article 87(2) 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. In addition, under the first subparagraph of Article 87(3) of the Rules of Procedure, the Court may, where each party succeeds on some and fails on other heads, order costs to be shared.
169. In the present case, OHIM and the intervener have failed on some heads, since the contested decision must be annulled in part, in accordance with the applicant’s head of claim. However, the applicant has applied for costs not against OHIM, but against the intervener.
170. Accordingly, the intervener is to bear one quarter of the costs of the applicant, as well as three quarters of its own costs. The applicant is to bear one quarter of the respective costs of the intervener and OHIM, as well as three quarters of its own costs. Lastly, OHIM is to bear three quarters of its own costs.
Operative part
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 June 2011 (Case R 181/2007-1) in so far as it declared that the Community word mark LAGUIOLE was invalid for goods other than ‘hand tools and implements (hand-operated); spoons; saws, razors, razor blades; shaving cases; nail files and nail nippers, nail-clippers; manicure sets’ in Class 8, ‘paper-cutters’ in Class 16, ‘corkscrews; bottle-openers’ and ‘shaving brushes, fitted vanity cases’ in Class 21, and ‘cigar cutters’ and ‘pipe cleaners’ in Class 34;
2. Dismisses the action as to the remainder;
3. Orders Forge de Laguiole SARL to bear one quarter of the costs of the applicant, as well as three quarters of its own costs;
4. Orders Gilbert Szajner to bear one quarter of the costs of Forge de Laguiole and one quarter of the costs of OHIM, as well as three quarters of his own costs;
5. Orders OHIM to bear three quarters of its own costs.