JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
18 January 2023 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark representing a crown – Earlier EU figurative marks representing a crown and ROLEX – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – No injury to reputation – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))
In Case T‑726/21,
Rolex SA, established in Geneva (Switzerland), represented by C. Sueiras Villalobos, P. Tent Alonso and V. Gigante Pérez, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
PWT A/S,
established in Aalborg (Denmark), represented by A. Skovfoged Melgaard and C. Barrett Christiansen, lawyers,
THE GENERAL COURT (Fifth Chamber),
composed, at the time of the deliberations, of D. Spielmann (Rapporteur), President, U. Öberg and M. Brkan, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 15 November 2022,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, Rolex SA, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 August 2021 (Case R 2389/2020-4) (‘the contested decision’).
Background to the dispute
2        On 27 November 2014, the intervener, PWT A/S, obtained international registration No 1263679 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO). The trade mark, which was the subject of that international registration designating the European Union, is the following figurative sign:
3        On 11 September 2015, EUIPO received notification of international registration No 1263679 designating the European Union, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
4        The goods in respect of which registration was sought are in, inter alia, Class 25 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: ‘Clothing, footwear, headgear’.
5        On 3 June 2016, the applicant, Rolex SA, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 4 above.
6        The opposition was based on the following earlier marks:
–        the EU figurative mark reproduced below, registered on 16 February 2001 under number 1456201 and covering, inter alia, ‘watches’ in Class 14 (‘the earlier purely figurative mark’):
–        the EU figurative mark reproduced below, registered on 16 February 2001 under number 1455757 and covering, inter alia, ‘watches’ in Class 14 (‘the earlier composite mark’):
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
8        Following a request made by the intervener, EUIPO invited the applicant to furnish proof of genuine use of the earlier marks relied on in support of the opposition. The applicant complied with that request within the prescribed period.
9        On 19 October 2020, the Opposition Division upheld the opposition on the basis of Article 8(5) of Regulation No 207/2009.
10      On 16 December 2020, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.
11      By the contested decision, the Board of Appeal upheld the appeal. As a preliminary point, it noted that the Opposition Division’s decision had become final in so far as the opposition had been upheld in respect of the goods and services in Classes 3, 9, 18 and 35 covered by the mark applied for. It concluded that it had to examine the opposition in respect of the following goods in Class 25: ‘Clothing, footwear, headgear’. To the extent that the opposition was based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found that the ‘watches’ in Class 14 were dissimilar to the ‘clothing, footwear, headgear’ in Class 25 and, on that ground, found that there was no likelihood of confusion. In so far as the opposition was based on Article 8(5) of that regulation, it found that the reputation of the earlier purely figurative mark was not established and that the reputation of the earlier composite mark was established for wrist watches. It added that the latter mark and the mark applied for were, at most, visually similar to a very low degree, that a phonetic comparison was not possible between them and that the conceptual similarity resulting from the common presence of a crown had a very limited impact. It inferred from this that the relevant public would not make a link between those marks, with the result that no risk of injury to the reputation of the earlier composite mark was established.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In accordance with Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989, the date on which the international registration designating the European Union is obtained corresponds to the date of the filing, with the office dealing with the request, of the application for registration of the mark for which protection is sought throughout the territory of the parties to the Madrid Agreement.
15      In view of the date on which the international registration No 1263679 designating the European Union was obtained, namely 27 November 2014, being the date on which the application for registration at issue was filed (see, to that effect, judgments of 30 June 2021, Zoom v EUIPO – Facetec (ZOOM), T‑204/20, not published, EU:T:2021:391, paragraph 17 and the case-law cited, and of 8 September 2021, SBG v EUIPO – VF International (GEØGRAPHICAL NØRWAY), T‑458/20, not published, EU:T:2021:543, paragraph 13 and the case-law cited), which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
16      In support of its action, the applicant relies, in essence, on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, secondly, infringement of Article 8(5) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
17      The applicant criticises the Board of Appeal for incorrectly holding that there were no similarities between the goods at issue and, moreover, for finding that there was no likelihood of confusion.
18      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
19      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
20      The applicant criticises the Board of Appeal for comparing the goods at issue without having taken account of their usual origin or the usual market practice followed in relation to them. It also submits that those goods belong to market segments which are proximate and that their purchase may be motivated by the search for an aesthetic complementarity.
21      EUIPO and the intervener dispute the applicant’s arguments.
22      In assessing the similarity of the goods or services at issue, all the relevant factors relating to them 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 each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned or the fact that those goods are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the impression that the same undertaking is responsible for the production of those goods or the provision of those services, or another market practice (see, to that effect, judgment of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraphs 45 and 55 and the case-law cited).
23      In paragraph 33 of the contested decision, the Board of Appeal found that the clothing, footwear and headgear in Class 25 covered by the mark applied for were dissimilar to the jewellery and watches in Class 14 covered by the earlier marks. In that regard, it held that those goods were different in nature and intended purpose, the former being intended to dress the human body and the latter to be worn for personal adornment. It added that those goods did not share the same distribution channels and that they were neither in competition nor complementary.
24      In the first place, it must be held that, in the light of those grounds, which refer, to the requisite legal standard, to the relevant factors in order to characterise the relationship between the goods at issue, in accordance with the case-law referred to in paragraph 22 above, on which the Board of Appeal relied, the applicant is wrong to criticise the Board of Appeal for not expressly mentioning the supposed proximity of the market segments to which the goods at issue belong and for having thereby vitiated its assessment of a failure to state reasons.
25      In the second place, it has already been held that jewellery and watches, even precious stones, one the one hand, and items of clothing, on the other, could not be regarded as similar (see, to that effect, judgments of 24 March 2010, 2nine v OHIM – Pacific Sunwear of California (nollie), T‑364/08, not published, EU:T:2010:115, paragraph 33 and the case-law cited, and of 10 October 2018, Cuervo y Sobrinos 1882 v EUIPO – A. Salgado Nespereira (Cuervo y Sobrinos LA HABANA 1882), T‑374/17, not published, EU:T:2018:669, paragraph 35 and the case-law cited).
26      Moreover, it should be noted that the applicant does not dispute the Board of Appeal’s findings that the goods at issue are different in nature and intended purpose.
27      In addition, the applicant claims that the goods at issue belong to market segments which are proximate, inasmuch as, in the luxury goods sector, those goods are sold under well-known brands of designers and manufacturers, and clothing manufacturers also offer watches. That claim is not capable of calling into question the Board of Appeal’s assessment that the goods at issue are not in competition with each other.
28      In the third place, as regards the applicant’s argument alleging a usual commercial origin which the goods at issue have in common, it must be recalled that, for consumers to believe that those products have the same commercial origin, they would also have to consider it usual for those products to be sold under the same trade mark, which normally implies that a large number of the producers or distributors of the goods are the same (judgment of 1 March 2005, Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI), T‑169/03, EU:T:2005:72, paragraph 63; see also, to that effect, judgment of 23 September 2014, Nuna International v OHIM – Nanu-Nana Joachim Hoepp (nuna), T‑195/12, not published, EU:T:2014:804, paragraph 58).
29      In the present case, the applicant merely alleges the growing importance of online trade, the growing tendency towards convergence of fashion and technology, including wristwear, and the supposed well-known fact, common in the fashion sector and usual for consumers, of seeing clothing and accessories, such as eyewear, jewellery and watches, being offered in the same sales outlets. However, it does not submit any evidence to that effect. The applicant adds that that practice results in a certain cognitive behaviour and a certain state of mind, but without providing further detail.
30      Moreover, contrary to the applicant’s claims, it is not apparent from paragraph 33 of the contested decision that the Board of Appeal ruled out, as a matter of principle, the possible relevance of the alleged market practice at issue in its comparison of the goods.
31      In addition, it must be pointed out that the fact that the goods at issue may be sold in the same commercial establishments, such as department stores, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see, to that effect, judgment of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 83 and the case-law cited).
32      Furthermore, the applicant’s arguments that the purchase of the goods at issue may be based on the search for an aesthetic complementarity must be rejected as ineffective. The applicant itself concedes that such a fact is insufficient to conclude that there is a similarity between those goods.
33      In the fourth and last place, the mere fact that clothing and watches are designated, in a report drawn up by the Organisation for Economic Cooperation and Development (OECD) and EUIPO on the worldwide trade in counterfeits as being capable of being luxury items, is irrelevant for the purpose of establishing any similarity between the goods at issue. In opposition proceedings, the comparison of the goods must concern the description of the goods covered by the marks at issue and not the goods for which the trade marks are actually used (judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM‑PIM’S BABY‑PROP), T‑133/05, EU:T:2006:247, paragraph 30). It is not apparent from the descriptions of the goods at issue, as reproduced in paragraphs 4 and 6 above, that they are expensive and high-end goods. In the absence of any specific information to the contrary, they may come within any range and are not necessarily expensive or luxury items (see, to that effect, 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 26 and the case-law cited).
34      It follows that the Board of Appeal was fully entitled to find that the goods at issue were dissimilar. The applicant’s arguments must therefore be rejected.
35      It follows that, in the light of the case-law referred to in paragraph 19 above, the Board of Appeal was fully entitled to find that there was no likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
36      Consequently, the applicant’s arguments alleging that the Board of Appeal concluded that there was no such likelihood without examining the similarities between the signs at issue and without carrying out a global assessment of the likelihood of confusion must be rejected.
The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
37      The applicant criticises the Board of Appeal for infringing Article 8(5) of Regulation No 207/2009 by having incorrectly assessed the similarities of the signs at issue and by failing to find that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier composite mark.
38      Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, 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.
39      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35; see, also, judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).
40      As regards, more particularly, the fourth of the conditions for the application of Article 8(5) of Regulation No 207/2009, that condition refers to three separate and alternative types of risk, namely that the use without due cause of the mark applied for, first, is detrimental to the distinctive character of the earlier mark, secondly, is detrimental to the repute of the earlier mark or, thirdly, takes unfair advantage of the distinctive character or the repute of the earlier mark (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 36 and the case-law cited).
41      Just one of those three types of risk of injury suffices for Article 8(5) of Regulation No 207/2009 to apply (judgment of 4 March 2020, Tulliallan Burlington
v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 74; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 28).
42      In order to benefit from the protection introduced by the provisions of Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must, first of all, adduce proof, either that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, or that it would be detrimental to that distinctive character or that repute (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 37).
43      In that regard, although the proprietor of the earlier trade mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009, it must, however, prove that there is a serious risk that such an injury will occur in the future (judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 75; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 38).
44      The Board of Appeal noted that, in order to demonstrate the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, the applicant had not submitted observations to it, but that, before the Opposition Division, it had argued that the intervener could take unfair advantage of the degree of recognition of the earlier composite mark on account of the fact that the signs at issue were almost identical and the immense reputation acquired by the earlier marks, which allegedly convey images of prestige, luxury and an active lifestyle. It found that, by those arguments, the applicant had in fact merely referred to the wording of Article 8(5) of Regulation No 207/2009, without submitting any coherent arguments as to why one of such injuries would occur. The Board of Appeal inferred from this that no injury referred to in that provision was established.
45      The applicant criticises the Board of Appeal for erring in its assessment of the risk that the use of the mark applied for infringes the earlier mark as set out in Article 8(5) of Regulation No 207/2009 and for incorrectly finding that the applicant had not demonstrated such a risk.
46      It must be stated that, in order to dispute the Board of Appeal’s assessments, the applicant merely relies on the following arguments. First, the Board of Appeal acknowledged the reputation of the earlier composite mark for ‘wrist watches’ in Class 14, which shows that it implicitly found that that mark had, within the meaning of paragraph 35 of the judgment of 22 March 2007, VIPS (T‑215/03, EU:T:2007:93), an inherent economic value which is independent of and separate from the goods for which it was registered, and which, for that reason, merited protection. Secondly, the reputation of a mark is, in most cases, the result of considerable effort and investment on the part of its proprietor. Thirdly, the Board of Appeal wrongly held that the applicant had not stated the reasons why any of the injuries set out in Article 8(5) of Regulation No 207/2009 could have occurred. The applicant refers in that regard to certain pages of its observations before the Opposition Division.
47      It must be stated at the outset that the applicant’s arguments do not make it possible to identify the injury or injuries set out in Article 8(5) of Regulation No 207/2009 which might be caused to the earlier composite mark, to its detriment, by the use of the mark applied for.
48      Furthermore, by those arguments, the applicant, in essence, infers that there is a risk of injury, which it does not identify, to the reputation of the earlier composite mark, from meeting the conditions, referred to in paragraph 39 above, relating to the similarity of the signs at issue, the registration and the reputation of that mark.
49      It is true that there is some interdependence of the conditions for applying Article 8(5) of Regulation No 207/2009, inasmuch as the stronger that mark’s distinctive character and reputation the easier it will be to accept that injury has been caused to it (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69).
50      However, it is apparent from the case-law recalled in paragraph 39 above that the demonstration of the existence of an injury referred to in Article 8(5) of Regulation No 207/2009 is a set of cumulative conditions distinct from the other conditions laid down in that provision. In that regard, as is recalled in paragraph 43 above, to demonstrate that injury the applicant is obliged to prove that there is a serious risk that one of the types of injury will occur in the future (see, to that effect, judgment of 19 May 2021, Puma v EUIPO – Gemma Group (Representation of a bounding feline), T‑510/19, not published, EU:T:2021:281, paragraph 127).
51      It must be held that the applicant’s arguments referred to in paragraph 46 above do not make it possible to establish the existence of such proof. The applicant confines itself in that regard to stating that the Board of Appeal recognised the reputation of the earlier composite mark for wrist watches, citing an extract from paragraph 35 of the judgment of 22 March 2007, VIPS (T‑215/03, EU:T:2007:93), and submitting a general consideration relating to the size of the investment necessary for the acquisition of a reputation.
52      The applicant cannot effectively substantiate its arguments in that regard by references to certain pages of its observations before the Opposition Division. Although the application may be supported and supplemented, on specific points, by references to extracts from documents annexed thereto, the annexes have a purely evidential and instrumental function. The annexes cannot therefore serve as a basis for developing a plea set out in summary form in the application by putting forward complaints or arguments which are not contained in that application (see, by analogy, judgment of 31 January 2019, Thun
v EUIPO (Fish), T‑604/17, not published, EU:T:2019:42, paragraph 46 and the case-law cited).
53      As regards the applicant’s argument disputing the Board of Appeal’s assertion that it had not established the existence of evidence supporting the finding that there was a serious risk that one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 would occur in the future, it must be stated that that argument is itself also substantiated only by references to certain pages of its observations before the Opposition Division. It must therefore be rejected.
54      Lastly, at the hearing, the applicant challenged for the first time the Board of Appeal’s finding that the reputation of the earlier purely figurative mark had not been established. However, it has neither established nor even claimed that that complaint resulted from matters of law or of fact which came to light in the course of the procedure or that the complaint amplified the plea alleging infringement of Article 8(5) of Regulation No 207/2009 or was closely connected with that plea. In that regard, it should be borne in mind that the line of argument set out in the application related only to the earlier composite mark, and not at all to the earlier purely figurative mark. Accordingly, the complaint must be rejected as being inadmissible pursuant to Article 84(1) of the Rules of Procedure of the General Court.
55      Consequently, the Board of Appeal was fully entitled to find that none of the injuries referred to in Article 8(5) of Regulation No 207/2009 had been established, with the result that one of the necessary conditions for the application of that provision was not satisfied.
56      It follows from the foregoing that the second plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
57      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Rolex SA to pay the costs.
Spielmann
Öberg
Brkan
Delivered in open court in Luxembourg on 18 January 2023.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.