JUDGMENT OF THE GENERAL COURT (First Chamber)
21 December 2022 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark representing a pack of cigarettes – Earlier international figurative mark Marlboro SELECTED PREMIUM TOBACCOS – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EU) 2017/1001)
In Case T‑44/22,
International Masis Tabak LLC, established in Masis (Armenia), represented by C. Bercial Arias and K. Dimidjian-Lecompte, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Schäfer and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Philip Morris Brands Sàrl, established in Neuchâtel (Switzerland), represented by L. Alonso Domingo, lawyer,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, M. Brkan and I. Gâlea (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, International Masis Tabak LLC, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 November 2021 (Case R 261/2021-5) (‘the contested decision’).
Background to the dispute
2        On 7 February 2018, the applicant obtained international registration designating the European Union No 1434506 from the International Bureau of the World Intellectual Property Organization (WIPO). The trade mark that is the subject of the international registration designating the European Union is the following figurative mark:
3        On 15 November 2017, EUIPO received notification of the international registration designating the European Union, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
4        The goods in respect of which protection in the European Union was sought are in Class 34 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Tobacco, smoking articles, matches, gas containers for cigar lighters; absorbent paper for tobacco pipes; cigarette papers; humidors; lighters for smokers; tobacco pouches; books of cigarette papers; tobacco pipes; match holders; firestones; cigar cutters; tips of yellow amber for cigar and cigarette holders; ashtrays for smokers; tobacco jars; cigar holders; cigarette holders; spittoons for tobacco users; pipes; mouthpieces for cigarette holders; cigarette filters; pipe cleaners for tobacco pipes; cigarettes; cigarette tips; cigarillos; cigars; pipe racks for tobacco pipes; match boxes; chewing tobacco; snuff; pocket machines for rolling cigarettes; cigarette and tobacco cases; cigar cases’.
5        The trade mark application was published in European Union Trade Marks Bulletin
No 218/2018 of 16 November 2018.
6        On 1 March 2019, the intervener, Philip Morris Brands Sàrl, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 4 above.
7        The opposition was based, inter alia, on the international registration designating the European Union in respect of the figurative mark Marlboro SELECTED PREMIUM TOBACCOS, reproduced below, registered on 3 February 2014 under No 1204795 and covering goods in Class 34 corresponding to the following description: ‘Tobacco, raw or manufactured, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, tobacco substitutes (not for medical purposes), smoker’s articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays not of precious metals, their alloys or coated therewith; pipes, pocket apparatus for rolling cigarettes; lighters; matches’:
8        The ground relied on in support of the opposition was, inter alia, that set out in Article 8(5) of Regulation 2017/1001.
9        On 5 January 2021, the Opposition Division upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001.
10      On 8 February 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
11      By the contested decision, the Board of Appeal dismissed the appeal. It found that, in the present case, all the conditions laid down in Article 8(5) of Regulation 2017/1001 were fulfilled as regards the earlier mark, in view of its substantial reputation for ‘cigarettes’ in Class 34, a certain degree of visual similarity between the signs at issue, the existence of a link between the marks at issue on account of the fact that the goods at issue are identical or similar to a high degree, and the risk that the use of the mark applied for without due cause would take unfair advantage of the repute of the earlier mark. Since the opposition was based on that ground and on the basis of the earlier mark alone, the Board of Appeal found that it was not necessary to examine the other grounds and earlier rights relied on.
Forms of order sought
12      The applicant claims that the Court should:
–        uphold the action and annul the contested decision;
–        order EUIPO and, where appropriate, the intervener to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
14      The intervener contends that the Court should:
–        uphold the contested decision;
–        order the applicant to pay the costs.
Law
15      As a preliminary point, with regard to the intervener’s first head of claim, given that upholding the contested decision is tantamount to dismissing the action, that head of claim must be interpreted as requesting, in essence, that the action be dismissed (see, to that effect, judgments of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 19 (not published), and of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 16).
16      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001.
17      Under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2 of that article, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
18      It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54 and the case-law cited).
19      In the present case, the applicant does not dispute before the Court that the earlier mark has acquired a substantial reputation in the European Union with regard to cigarettes, as regards both the word element ‘marlboro’ and the figurative element in the shape of a rooftop, as well as enhanced distinctiveness as a result of long-standing use.
20      Furthermore, the applicant does not dispute that the relevant public is the general public of the European Union, namely consumers of tobacco products, who show a high level of attention on account of their loyalty to the brand of those products.
21      It should also be added in that regard that the Board of Appeal found that that degree of brand loyalty could not apply to goods, such as lighters and matches, in respect of which the relevant public’s general awareness is at least normal. Moreover, that finding is not disputed by the applicant either.
22      Lastly, the applicant also does not dispute the Board of Appeal’s finding that the goods covered by the earlier mark, in respect of which the earlier mark was recognised as having a reputation, are either identical with, or, in the case of smokers’ articles, closely related to ‘cigarettes’.
23      It is in the light of those considerations that the Court must examine whether, as the applicant claims, the Board of Appeal made errors of assessment and thus infringed Article 8(5) of Regulation 2017/1001.
24      In support of that single plea in law, the applicant puts forward four complaints, alleging (i) that there is no similarity between the marks at issue, (ii) that there is no link between those marks, (iii) that there is no unfair advantage and (iv) that there is due cause.
The first complaint, alleging that there is no similarity between the signs at issue
25      The Board of Appeal found that the marks at issue were visually similar to some extent, in particular in respect of the dominant polygonal element, which is placed in the same position. Despite the presence of some differences in that element, it nevertheless produced a similar visual impression on account of its almost identical shape in both marks. Consequently, and taking into account all the elements of the marks at issue, which must be taken as a whole, the Board of Appeal found that they were visually similar to a low degree. It added that the signs could not be compared phonetically or conceptually, given that the sign applied for was purely figurative and did not convey any particular concept. Since the signs had been found to be similar for one of the aspects of the comparison, the Board of Appeal concluded that there was at least some degree of similarity between the signs.
26      The applicant submits that the Board of Appeal made an error of assessment in finding that the marks at issue were similar. According to the applicant, the Board of Appeal incorrectly reduced the sign applied for to a simple polygonal shape, whereas it is in fact the representation of Mount Ararat, or at least of two mountains. The applicant claims that the Board of Appeal also disregarded the other elements of that sign, namely the reversed letter ‘a’ corresponding to Ararat and the shield containing the letters ‘IMT’ referring to the applicant’s company name, even though they would not be difficult to perceive. In that regard, the applicant refers to the description that it provided in its trade mark application. Thus, it submits that the marks at issue were not assessed as a whole, taking account of their various components. Furthermore, the applicant submits that the sign applied for is not purely figurative, given that the word elements are not difficult to perceive, and that it is conceptually different from the word element ‘marlboro’ of the earlier mark.
27      EUIPO and the intervener dispute the applicant’s arguments.
28      The existence of a similarity between an earlier mark and a mark applied for is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001. That condition presupposes, in the context both of Article 8(1)(b) and of Article 8(5), that there are, in particular, elements of visual, phonetic or conceptual similarity (see, to that effect, judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 52, and of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 148).
29      However, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) of Regulation 2017/1001 may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) of Regulation 2017/1001 or under Article 8(5) (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs  53 and 54).
30      It should also be recalled that the comparison of the signs must, so far as concerns the visual, phonetic and conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 32).
31      In the present case, the signs to be compared are as follows:
Earlier mark
Mark applied for
32      Visually, the earlier sign is in the rectangular form of a pack of cigarettes. It consists of a white lower section and an upper part of a red polygonal shape with five sides, the two lower sides of which point downwards, representing two sides of a white triangle or the shape of a rooftop. In addition, that sign contains a shield and the word elements ‘marlboro’ and ‘selected premium tobaccos’, printed in the background in very light grey, thus making them hardly visible. Therefore, the visually dominant element is the polygonal shape producing the impression of a white triangle or a rooftop pointing upwards.
33      The sign applied for is also in the rectangular form of a pack of cigarettes, consisting of a white lower section. The upper part is, in turn, composed of a dark grey polygonal shape with seven sides, the lower sides of which point downwards, forming two overlapping irregular triangles. The triangle in the foreground is white, slightly offset to the right and contains a black shield containing the group of letters ‘IMT’ that is hardly visible. Behind it there is another light grey triangle, above which is a white square also containing a dark grey triangular shape. Therefore, the polygonal shape producing the impression of two triangles constitutes the visually dominant element and the other elements play only a secondary role on account of their small size.
34      As regards, first, the applicant’s argument that the Board of Appeal erred in reducing the sign applied for to a simple polygonal shape, the Court considers that the Board of Appeal did not incorrectly define the polygonal shape of that sign. The majority of the relevant public will not perceive the overlapping triangular shapes as a particular representation of Mount Ararat, but as an abstract triangular geometric shape. As the Board of Appeal states in paragraphs 32 and 65 of the contested decision, a limited part of the relevant public could also, at most, perceive those two irregular triangles as the representation of two superimposed mountains.
35      Second, the applicant states in paragraph 34 of the application that consumers know about Mount Ararat, since there are several million Christians and Muslims in the European Union and that biblical mountain is famous because of its connection with Noah’s Ark, mentioned in the Bible and the Koran. That argument cannot constitute actual evidence of the relevant public’s knowledge and perception of the triangular shape of the sign applied for as constituting precisely a representation of Mount Ararat. As stated in paragraph 34 above, at most only a limited part of the relevant public might see in those two triangles a representation of two superimposed mountains.
36      Third, the applicant’s claim that the Board of Appeal disregarded the other elements of the sign applied for and did not compare the signs as a whole is incorrect. It is apparent from paragraphs 31 to 33 of the contested decision that the Board of Appeal expressly examined, on the one hand, the shield and the white square of the sign applied for and, on the other, the shield and the word elements of the earlier sign, and concluded that they were smaller in size, or even difficult to perceive, and therefore had a reduced impact on the overall impression produced by the signs.
37      Fourth, as regards the judgment of 21 April 2021, Chanel v EUIPO – Huawei Technologies (Representation of a circle containing two interlaced curves) (T‑44/20, not published, EU:T:2021:207), relied on by the applicant, the Court had, in the case at issue, stated as a preliminary point that the signs at issue had to be compared in the form in which they had been registered or applied for, irrespective of their actual or potential use in another form. In view of the fact that the signs appeared as two curves which interlaced, but in a different position, and in view of numerous visible differences, the Court considered that, assessed globally, the marks at issue were visually different, despite the presence in each of them of two interlaced curves within a black circle, the latter being, moreover, a common geometric element (judgment of 21 April 2021, Representation of a circle containing two interlaced curves, T‑44/20, not published, EU:T:2021:207, paragraphs 25, 32, 35 to 37 and 51).
38      That conclusion cannot be applied by analogy to the signs at issue in the present case because, as the intervener points out, the polygonal shapes are not common, but irregular and placed in a comparable position and are also of a comparable size, which justifies an overall impression that is slightly similar visually.
39      Fifth, as regards the Board of Appeal’s finding that the sign applied for is purely figurative given that its word elements are illegible, it must be borne in mind, as observed by EUIPO, that, according to the case-law, not only a sign which is actually impossible to read or decipher must be regarded as illegible, but also a sign which is so difficult to decipher, understand or read that a reasonably observant and circumspect consumer cannot manage to do so without making an analysis which goes beyond what may reasonably be expected of him or her in a purchasing situation (judgment of 2 July 2008, Stradivarius España v OHIM – Ricci (Stradivari 1715), T‑340/06, not published, EU:T:2008:241, paragraph 34).
40      In the present case, as established in paragraph 33 above, the letters in the shield are barely perceptible on account of their very small size. Furthermore, the relevant public will have even greater difficulty reading them because it does not proceed to analyse the various details of a trade mark when making a purchase (see, to that effect, judgment of 19 June 2019, Marriott Worldwide v EUIPO – AC Milan (AC MILAN), T‑28/18, not published, EU:T:2019:436, paragraph 41 and the case-law cited). Even if the relevant public were able to read those letters as representing the group of letters ‘IMT’, it is not clear, in the absence of evidence to that effect, that the relevant public will perceive that group of letters as the initials of the applicant’s name, as the applicant claims.
41      The same applies to the alleged letter ‘a’ contained in the white square which, on account of its small size and the dominant polygonal element formed by the two overlapping triangles, will be likely to be perceived by the relevant public as another triangular shape instead of the first letter of the word ‘Ararat’.
42      Consequently, in view of the lack of visible word elements in the sign applied for and the fact that the word elements ‘marlboro’ and ‘selected premium tobaccos’ in the earlier sign are barely perceptible to the relevant public (see paragraph 32 above), the Board of Appeal was correct in finding that the sign applied for was purely figurative.
43      In the light of those assessments, it must be held that the Board of Appeal was correct in finding that the signs at issue had a common dominant element in the form of a coloured polygon in the upper part which, despite their differences, produced a similar visual impression, namely that of a white triangle. Consequently, the Board of Appeal was entitled to find that the signs at issue, taken as a whole, were visually similar to a low degree.
44      Phonetically, it must be borne in mind that, according to the case-law, a phonetic comparison is not relevant in the examination of the similarity of a figurative mark without word elements with another mark (see judgment of 30 September 2015, Mocek and Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna v OHIM – Lacoste (KAJMAN), T‑364/13, not published, EU:T:2015:738, paragraph 45 and the case-law cited), as is the case with the sign applied for, which has been regarded as purely figurative (see paragraph 42 above). Thus, the Board of Appeal did not make an error of assessment in finding that a phonetic comparison was not possible.
45      Conceptually, in so far as the sign applied for represents only an abstract triangular geometric shape and only a limited, and therefore insignificant, part of the relevant public could perceive it at most as two mountains, the Board of Appeal was correct in finding that that sign did not convey any particular concept and, therefore, that a conceptual comparison of the signs at issue was not possible.
46      That conclusion cannot be called into question by the applicant’s reference to the description of the mark applied for provided in the application for registration, which indicates that the triangular lines almost resemble the peaks of a mountain range. According to settled case-law, the possibility for an applicant for an EU trade mark to attach to the application a description of the sign applied for provides information on the perception of the sign by the trade mark applicant, but not at all on its perception by the relevant public. The description of the sign does not, as such, affect the assessment of the conceptual similarity of the two signs at issue (see, to that effect and by analogy, judgments of 19 September 2018, Volkswagen v EUIPO – Paalupaikka (MAIN AUTO WHEELS), T‑623/16, not published, EU:T:2018:561, paragraph 40 and the case-law cited, and of 8 July 2020, Essential Export v EUIPO – Shenzhen Liouyi International Trading (TOTU), T‑633/19, not published, EU:T:2020:312, paragraph 38 and the case-law cited). The applicant’s argument in that regard is therefore ineffective.
47      It follows from the foregoing considerations that the Board of Appeal was entitled to conclude that, on account of the low degree of visual similarity between the signs at issue, there was at least some degree of similarity between those signs, justifying the examination of the other conditions laid down in Article 8(5) of Regulation 2017/1001.
48      Accordingly, the first complaint must be rejected as unfounded.
The second complaint, alleging that there is no link between the marks at issue
49      The Board of Appeal found that the earlier mark had a substantial reputation in the European Union and had acquired enhanced distinctiveness as a result of its long-standing and extensive use. Furthermore, it found that the signs were visually similar to a low degree and, since the goods were not only named aloud, but also visually inspected during a purchase, that the visual aspects of the comparison were relevant. It therefore concluded that the relevant public would establish a link between the marks at issue.
50      The applicant submits that, in view of the significant differences between the signs at issue, there is no likelihood of confusion or link between those signs, in spite of the reputation of the earlier mark and the fact that the goods at issue are identical. According to the applicant, the only link between the marks at issue is their competition in the tobacco sector, which does not mean that the relevant public will necessarily make a link between those marks, given the high level of attention of the relevant consumers, which may result from brand loyalty.
51      EUIPO and the intervener dispute the applicant’s arguments.
52      According to the case-law, the types of injury to trade marks with a reputation, referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them. In the absence of such a link in the mind of the public, the use of the mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgments of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraphs 63 and 64 and the case-law cited, and of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraph 35 and the case-law cited).
53      There must be a global assessment as to whether there is a link between the marks at issue in the mind of the public, taking into account all factors relevant to the circumstances of the case, including the degree of similarity between the marks at issue; the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26, and judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 21; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42).
54      In the present case, as is apparent from paragraphs 19 to 22 above, the applicant does not dispute the substantial reputation and enhanced distinctiveness acquired through use of the earlier mark, the fact that the goods at issue are identical or similar, or the fact that the sections of the public concerned by the goods covered by the marks at issue are identical.
55      It should also be noted that the signs at issue are visually similar to a low degree (see paragraph 43 above). In that regard, the Board of Appeal found that the visual aspects are significant, since the goods at issue are not only named aloud, but also need to be inspected visually during a purchase, which the applicant does not dispute.
56      Consequently, the Board of Appeal did not make an error of assessment in finding, all those elements taken as a whole, that the relevant public would establish a link between the marks at issue.
57      Furthermore, the judgments of 15 September 2009, Parfums Christian Dior v OHIM – Consolidated Artists (MANGO adorably) (T‑308/08, not published, EU:T:2009:329), and of 21 January 2010, G-Star Raw Denim v OHIM – ESGW (G Stor) (T‑309/08, not published, EU:T:2010:22), relied on by the applicant in support of its argument that the strong differences between the signs mean that the relevant public would not be able to establish a link between the marks at issue cannot call into question the Board of Appeal’s finding. Those judgments concern trade marks in respect of which the differences found prevented any link between them. In the present case, it has been established in paragraph 47 above that the marks at issue are similar to a certain degree.
58      Consequently, the second complaint must be rejected as unfounded.
The third complaint, alleging that there is no unfair advantage
59      According to the Board of Appeal, the mark applied for, which evokes the polygonal element in the shape of a rooftop, will be able to take advantage of the image of the earlier mark and obtain a commercial advantage that would be unfair on account of the applicant’s lack of marketing and promotional efforts. It found that the relevant public was already familiar with the earlier mark by virtue of the polygonal element, which was widely used in different colours and on different ranges of cigarettes, and that the relevant public could therefore be led to believe that the goods covered by the mark applied for were related to the intervener. Thus, it concluded that such free-riding on the coat-tails of the earlier mark would amount to taking unfair advantage of both the distinctive character and the repute of that mark.
60      The applicant submits that the fact that consumers are familiar with the earlier mark will not have any bearing on the marketing in the European Union of goods bearing such a different mark. According to the applicant, the intervener’s marketing efforts will not provide any benefit to the applicant. It states that, in view of their brand loyalty, consumers will not be inclined to purchase the goods covered by the mark applied for because of a remote similarity between the polygonal elements of the signs at issue, since that element of the mark applied for clearly represents two mountains. Accordingly, the applicant claims that, in view of the significant differences between the signs and the absence of a link in the minds of consumers, the mark applied for will not benefit from the repute of the earlier mark and so there is no unfair advantage.
61      EUIPO and the intervener dispute the applicant’s arguments.
62      It is clear from the case-law that the concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 40, and of 17 October 2018, Golden Balls v EUIPO – Les Éditions P. Amaury (GOLDEN BALLS), T‑8/17, not published, EU:T:2018:692, paragraph 106).
63      The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image (judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 50).
64      Nevertheless, the proprietor of the earlier mark is not required to demonstrate actual and present injury to its mark. The proprietor must only adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see judgment of 17 October 2018, GOLDEN BALLS, T‑8/17, not published, EU:T:2018:692, paragraph 140 and the case-law cited; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 38).
65      In order to determine whether the use of the mark applied for takes unfair advantage of the distinctive character or the repute of the earlier mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of distinctive character of the earlier mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the earlier mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the earlier mark (see judgments of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 44 and the case-law cited, and of 14 December 2012, Bimbo v OHIM – Grupo Bimbo (GRUPO BIMBO), T‑357/11, not published, EU:T:2012:696, paragraph 38 and the case-law cited).
66      In the present case, the Court observes that, in essence, the applicant merely states that the marks at issue are so different that this prevents the mark applied for from taking advantage of the repute of the earlier mark, given consumers’ brand loyalty for tobacco products. As is clear from paragraphs 54 to 56 above, the marks at issue have a certain similarity, which, together with the repute and enhanced distinctiveness of the earlier mark and the fact that the goods are identical or similar, enables the relevant public to establish a link between those marks.
67      Furthermore, in view of the evidence produced by the intervener before the Board of Appeal, the Board of Appeal was entitled to find, in paragraph 59 of the contested decision, that the rooftop-shaped polygonal element of the earlier mark had been widely used, in different colours and for different ranges of cigarettes, so that consumers could be led to believe that the polygonal element of the mark applied for was merely a variant of that element of the earlier mark. Therefore, the goods marketed under the mark applied for could be perceived as being linked to the intervener, thus facilitating their promotion and marketing, without any financial compensation for the marketing effort expended by the intervener in order to create and maintain the image of its mark, as is apparent from the case‑law cited in paragraphs 62 and 63 above.
68      Thus, taking into account all the factors set out in the case-law referred to in paragraph 65 above and recalled in paragraph 66 above, the Board of Appeal did not make an error of assessment in finding that there was a risk that the mark applied for would take unfair advantage of the enhanced distinctive character and the repute of the earlier mark.
69      Accordingly, the third complaint must be rejected as unfounded.
The fourth complaint, alleging that there is due cause
70      The Board of Appeal found that the applicant’s arguments to the effect that the mark applied for represented Mount Ararat, that it had been registered in numerous countries since 2010 and that its cigarettes bearing the image of Mount Ararat were well known in Armenia were irrelevant, since neither the facts that occurred before the mark applied for was filed nor the evidence concerning territories outside the European Union could be taken into consideration. It added that the relevant public would perceive the figurative element primarily as a geometric shape or, at most, as random mountains, but not as a specific mountain located outside the European Union. Taking the view that, by choosing a similar shape, the applicant was clearly attempting to align itself with the intervener, the Board of Appeal concluded that there was no due cause.
71      The applicant claims that there is due cause for the use of the sign applied for, because it represents Mount Ararat and is the evolution of the previous design of that mark dating from 1975. It adds that, even if consumers in the European Union did not identify the figurative element as Mount Ararat, that element would in any event be perceived as a mountain that is visually different from the graphic element of the earlier mark. It also states that it created its logo in good faith and merely sought to extend to the European Union the protection of its trade marks that were already registered in other countries, without there being any evidence of an intention to take unfair advantage of the earlier mark.
72      EUIPO and the intervener dispute the applicant’s arguments.
73      Where the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (see judgments of 7 December 2010, Nute Partecipazioni and La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T‑59/08, EU:T:2010:500, paragraph 34 and the case-law cited, and of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 73 and the case-law cited).
74      Furthermore, it follows from Article 8(5) of Regulation 2017/1001 that the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before the mark with a reputation was filed and that the use of that sign in relation to the identical product is in good faith (see, to that effect and by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 60).
75      It must also be pointed out that whether there is a due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively (judgment of 16 March 2016, The Body Shop International v OHIM – Spa Monopole (SPA WISDOM), T‑201/14, not published, EU:T:2016:148, paragraph 65).
76      First of all, the Court recalls that it was established in paragraph 35 above that the applicant’s assertion that the mark applied for represents Mount Ararat does not constitute evidence of the relevant public’s knowledge and perception as such. Moreover, the applicant itself mentions the possibility of that public not identifying the figurative element as Mount Ararat, while stating that it would in any event be perceived as a mountain. The applicant does not, however, explain how that argument constitutes due cause for the use of the mark applied for.
77      Next, the Board of Appeal was fully entitled to reject the applicant’s arguments that the mark applied for has been registered in many countries outside the European Union since 2010, that its cigarettes representing Mount Ararat are well known in Armenia and that it merely sought to extend the protection of its already registered trade marks to the European Union.
78      The evidence produced by the applicant, which relates to territories outside the European Union, is irrelevant by virtue of the principle of territoriality, given that the protection of the mark applied for is claimed within the European Union.
79      As regards the applicant’s argument that it created that logo in good faith, it must be borne in mind that the absence of any intent on the part of the proprietor of the contested mark to free-ride, even if established, is not in itself sufficient to rule out the possibility of unfair advantage being gained from the use of that mark. Factors which are, by nature, subjective, such as the commercial intentions, real or supposed, of the proprietor of the contested mark do not have to be taken into account when assessing whether there is a risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, within the meaning of Article 8(5) of Regulation 2017/1001 (see judgment of 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL), T‑509/19, not published, EU:T:2021:225, paragraph 134 and the case-law cited).
80      Furthermore, as EUIPO observes, the Court has already held that the assessment of due cause requires a determination as to how the mark applied for has been accepted by, and what its reputation is with, the relevant public (see, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 54). The applicant has not adduced any evidence as to how its mark has been accepted by consumers in the European Union. The applicant merely produced certificates of registration of its trade mark in Sweden and Croatia, without, however, showing, by additional arguments or evidence, how the relevant public perceived that trade mark in those countries or how it was used there, within the meaning of the case-law cited in paragraph 74 above.
81      Lastly, as regards the applicant’s argument relating to the evolution of the previous design of the trade mark dating from 1975 and the references it makes in that regard, in paragraphs 56 and 57 of its application, to the arguments and links which it had put forward in its written pleadings submitted before EUIPO, it must be borne in mind that, although specific points in the text of the application can be supported and supplemented by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument, which must appear in the application itself. It is not for the Court to find in the file of the proceedings before EUIPO the arguments to which the applicant might be referring or to examine them, since such arguments are inadmissible (see, to that effect, judgments of 13 March 2013, Biodes v OHIM – Manasul Internacional (FARMASUL), T‑553/10, not published, EU:T:2013:126, paragraph 33, and of 23 May 2019, Holzer y Cia v EUIPO – Annco (ANN TAYLOR and AT ANN TAYLOR), T‑3/18 and T‑4/18, EU:T:2019:357, paragraph 76 and the case-law cited).
82      In the light of those considerations, the use of the mark applied for on which the applicant has relied cannot be regarded as a ground for registration of that mark, given the risk that its use could take advantage of the repute of the earlier mark.
83      It follows that the Board of Appeal did not make an error of assessment in finding that there was no due cause for the use of the mark applied for.
84      Accordingly, the fourth complaint must be rejected as unfounded.
85      In the light of all the foregoing considerations, the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
86      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
87      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders International Masis Tabak LLC to pay the costs.
Spielmann
Brkan
Gâlea
Delivered in open court in Luxembourg on 21 December 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.