JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
16 February 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark Land Glider — Earlier EU and national word and figurative marks LAND ROVER — Relative ground for refusal — Article 8(5) of Regulation (EC) No 207/2009)
In Case T‑71/15,
Jaguar Land Rover Ltd, established in Coventry (United Kingdom), represented by R. Ingerl, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Garrido Otaola, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Nissan Jidosha KK, established in Yokohama (Japan), represented by A. Franke, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 9 December 2014 (Case R 1415/2013-4)relating to opposition proceedings between Jaguar Land Rover and Nissan Jidosha,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 12 February 2015,
having regard to the response of EUIPO lodged at the Court Registry on 20 May 2015,
having regard to the response of the intervener lodged at the Court Registry on 2 June 2015,
further to the hearing on 7 April 2016,
gives the following
Judgment
Background to the dispute
1        On 27 May 2009, the intervener, Nissan Jidosha KK, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the word sign Land Glider.
3        The goods in respect of which registration was sought are in Class 12 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: ‘Electric vehicles (concept cars), except two-wheel vehicles’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 30/2009of 10 August 2009.
5        On 10 November 2009, the applicant, Jaguar Land Rover Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of all the goods referred to in the registration application.
6        The opposition was based on the following earlier rights:
–        EU word mark No 143644 LAND ROVER, registered on 19 July 2000, and duly renewed, in particular for goods in Class 12 corresponding to the following description: ‘land vehicles and their engines; components and accessories for land vehicles’;
–        EU word mark No 2271500 LAND ROVER, registered on 7 October 2002, and duly renewed, for goods in Class 12 corresponding in particular to the following description: ‘vehicles; parts, fittings and accessories for all the aforesaid goods’;
–        German word mark No 39507030 LAND ROVER, registered on 17 January 1997, and duly renewed, in particular for goods in Class 12 corresponding to the following description: ‘land vehicles, engines for land vehicles; parts and components for the aforesaid goods’;
–        United Kingdom word mark No 663199 LAND ROVER, registered on 11 October 1947, and duly renewed, for goods in Class 12 corresponding to the following description: ‘Land motor-vehicles and parts thereof included in Class 12’;
–        United Kingdom word mark No 1579651 LAND ROVER, registered on 9 February 1996, for goods in Class 12 corresponding in particular to the following description: ‘Land vehicles; parts and fittings for land vehicles’;
–        EU figurative mark No 4847604, registered on 18 December 2007, in particular for goods in Class 12 corresponding to the following description: ‘Land vehicles and their engines; parts, components and accessories for land vehicles’, reproduced below:
–        German figurative mark No 39507031, registered on 17 January 1997, and duly renewed, in particular for goods in Class 12 corresponding to the following description: ‘Land vehicles, engines for land vehicles; parts and components for the aforesaid goods’, reproduced below:
–        United Kingdom figurative mark No 2024015, registered on 17 May 1996, for goods in Class 12 corresponding in particular to the following description: ‘Land vehicles; parts and fittings for land vehicles’, reproduced below:
–        United Kingdom figurative mark No 740778, registered on 29 March 1955, and duly renewed, for goods in Class 12 corresponding to the following description: ‘Motor land vehicles and parts thereof included in Class 12’, reproduced below:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009.
8        By letter of 10 August 2012, the intervener requested proof of use of the earlier marks on which the opposition was based. The Opposition Division thus invited the applicant, pursuant to Article 42(2) of Regulation No 207/2009, to furnish that proof. The applicant provided documents in order to show that the earlier marks had been put to genuine use.
9        On 30 May 2013, the Opposition Division upheld the opposition on the basis of Article 8(5) of Regulation No 207/2009 and refused the EU trade mark application. It based its decision on EU figurative mark No 4847604 which was not subject to an obligation of use at the date of publication of the EU trade mark application Land Glider. The Opposition Division found that the signs at issue were similar to the extent that they had in common the word ‘land’. In its view, the word ‘land’ will be understood in some languages, such as English, German or Dutch. It considered, however, that the public in some Member States would not understand the word ‘land’ and would see it as fanciful, and that, for that part of the relevant public, the common element ‘land’ in the signs at issue would not be perceived as a weak element of those signs. The Opposition Division also found that the evidence submitted by the applicant was sufficient to hold that EU trade mark No 4847604 enjoyed a reputation in the European Union for land vehicles. In addition, the Opposition Division considered that the relevant public was likely to associate the sign applied for with EU trade mark No 4847604 and establish a mental connection between those signs and that, lastly, the trade mark applied for was likely to take unfair advantage of the reputation of EU trade mark No 4847604.
10      On 25 July 2013, the intervener filed a notice of appeal with EUIPO against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
11      By decision of 9 December 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the appeal and rejected the opposition.
12      As regards the first ground of opposition, namely that referred to in Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal considered that there was no likelihood of confusion between the signs at issue in respect of the goods in question. It considered that the relevant public consisted of consumers with an enhanced level of attention throughout all the Member States of the European Union, and took the view that the goods at issue were identical. The Board of Appeal considered that the element ‘land’ common to the signs at issue classified the goods, namely as land vehicles, as distinct to other vehicles to be used in the air, on water or on rails. It found that nothing in the file allowed the conclusion that the element ‘land’, which is at least part of basic English and German vocabulary, especially in connection with the relevant goods, would not be understood in the entire European Union by consumers of cars.
13      In addition, the Board of Appeal considered that visually and phonetically the trade mark applied for and the earlier word marks were only similar to a low degree, because the relevant public would pay more attention to the second element in the signs at issue, due to the descriptive character of the element ‘land’. It found that the signs at issue were at best conceptually similar to a low degree. The Board of Appeal considered that the same conclusions applied to the comparison between the trade mark applied for and the earlier figurative marks, with the only difference being that the visual similarities are even more reduced.
14      The Board of Appeal also considered that the earlier trade marks had average inherent distinctiveness and that the probative value of the evidence submitted by the applicant did not allow any conclusions to be drawn as to whether they enjoyed an enhanced distinctive character through use. In particular in the light of the relevant public’s enhanced level of attention and of the fact that the marks at issue overlap only because of the presence of the element ‘land’, which the Board of Appeal considered weakly distinctive, if not devoid of distinctive character, the Board held that there was no likelihood of confusion, even assuming that the earlier marks’ distinctiveness was to be considered enhanced on account of their use.
15      As regards the second ground of opposition, namely that referred to in Article 8(5) of Regulation No 207/2009, the Board of Appeal considered that the common element ‘land’ was not sufficient to lead the consumer to establish a relevant link between the marks at issue that would allow the conclusion that the use of the trade mark applied for took unfair advantage of the distinctiveness and reputation of the earlier trade marks or was detrimental to them.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
17      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
18      The intervener contends that the Court should:
–        dismiss the action and uphold the contested decision;
–        order the applicant to pay the costs.
Law
19      In support of its action, the applicant relies on three pleas in law, alleging, firstly, an infringement of Article 8(1)(b) of Regulation No 207/2009, secondly, an infringement of Article 8(5) of Regulation No 207/2009 and, thirdly, an infringement of the first sentence of Article 75 of Regulation No 207/2009.
20      It is appropriate to begin by examining the second plea in law, alleging an infringement of Article 8(5) of Regulation No 207/2009. In the course of examining that plea, account will be taken of some of the arguments raised by the parties in the context of the first plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009.
The second plea in law, alleging an infringement of Article 8(5) of Regulation No 207/2009
21      The Board of Appeal held that the signs at issue coincided only in the weak or even non-distinctive element ‘land’ and differed with respect to the other elements. It also held that any reputation of the earlier trade marks would be for the trade marks as registered, not for any individual element, and that the common element ‘land’ would not, therefore, be sufficient to lead the consumer to establish a relevant link that would allow the conclusion that the use of the EU mark applied for took unfair advantage of the distinctiveness and reputation of the earlier trade marks or was detrimental to them. According to the Board of Appeal, Article 8(5) of Regulation No 207/2009 was not, therefore, applicable.
22      The applicant submits that, in so doing, the Board of Appeal did not carry out a comprehensive analysis of the ground of opposition relating to Article 8(5) of Regulation No 207/2009. It further submits, in particular, that the element ‘land’ is not descriptive of the goods at issue, that the Board of Appeal did not correctly assess the degree of similarity of the signs at issue and that it neither assessed nor took into account the strength of the earlier marks’ reputation.
23      EUIPO and the intervener contend that the Board of Appeal rightly concluded that Article 8(5) of Regulation No 207/2009 was not applicable, essentially endorsing the Board of Appeal’s findings.
Preliminary observations
24      Article 8(5) of Regulation No 207/2009, in the version in force until 22 March 2016, provided, ‘furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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.’
25      The wording of Article 8(5) of Regulation No 207/2009, in the version in force until 22 March 2016, referred to ‘goods or services which are not similar’. It must, however, be found that where the sign is used for identical or similar goods or services, a mark with a reputation must enjoy protection which is at least as extensive as where a sign is used for non-similar goods and services. Article 8(5) of Regulation No 207/2009, in the version in force until 22 March 2016, must therefore, by analogy, be interpreted as meaning that it may be relied on in support of an opposition lodged against an application for an EU trade mark covering goods and services which are not identical and not similar to those described by the earlier mark as well as against an application for an EU trade mark covering goods which are identical or similar to those of the earlier mark (see, to that effect, judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 32 and 33).
26      It is also to be noted that Article 8(5) of Regulation No 207/2009 was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21). The new version of that provision, which entered into force on 23 March 2016, expressly provides that it is to apply ‘irrespective of whether the goods or services for which [the mark applied for] is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered’, which is simply a clarification.
27      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 be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the trade mark applied for must be identical or similar. Thirdly, the earlier trade mark 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 trade 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 (judgments of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).
28      It is apparent from the case-law that when the degree of similarity in question does not prove to be sufficient to result in the application of Article 8(1)(b) of Regulation No 207/2009, this does not imply that the application of paragraph 5 of that article is necessarily precluded. The degree of similarity between the signs at issue required by each of the paragraphs of that provision is different. Whereas the application of Article 8(1)(b) of Regulation No 207/2009 is conditional on a finding of a degree of similarity between those signs which is capable of giving rise to a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood of confusion is not, by contrast, necessary as a condition for the application of paragraph 5 of that article (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraphs 40 and 41).
29      Since Article 8(5) of Regulation No 207/2009 merely requires the similarity which exists to be capable of leading the relevant public to make a connection between the signs at issue, that is to say, to establish a link between them, but does not require that similarity to be capable of leading that public to confuse those signs, it must be held that the protection which that provision lays down in favour of marks with a reputation may apply even if there is a lower degree of similarity between the signs at issue (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 42).
30      It follows that if there is some similarity between the signs at issue, the Board of Appeal must, in order to ascertain whether the conditions for the application of paragraph 5 of that article are satisfied, examine whether, on account of the presence of other relevant factors, the relevant public is capable of establishing a link between those signs (see, to that effect, judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 43).
31      Those factors include, inter alia, the degree of similarity between the conflicting signs, the nature of the goods or services at issue, including the degree of closeness or dissimilarity between the goods or services at issue, and the relevant section of the public, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (see, to that effect, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42, and of 29 March 2012, You-Q/OHIM — Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 47).
32      It is to be noted that, in the present case, the earlier trade marks are registered, so that the first condition referred to in paragraph 27 above is satisfied. The Board of Appeal also concluded that at least visually and phonetically the marks at issue were similar if only to a low degree (the second condition referred to in paragraph 27 above). As regards the earlier trade marks’ reputation (third condition referred to in paragraph 27 above), the Board of Appeal stated, first, that the probative value of the evidence submitted by the applicant did not allow any conclusions to be drawn as to whether the earlier trade marks had an enhanced distinctive character through use and, secondly, that even if they had a reputation, the relevant public would not establish a link between the signs at issue on the basis of the common element ‘land’.
33      As regards the fourth condition referred to in paragraph 27 above, namely the fact that the use without due cause of the trade mark applied for must lead to the risk that unfair advantage might be taken of the earlier trade mark’s distinctive character or repute or that it might be detrimental to them, it must be borne in mind that the infringements referred to in Article 8(5) of Regulation No 207/2009 are the consequence of a certain degree of similarity between the marks at issue, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them (see, by analogy, judgment of 23 October 2003, Adidas-Salomon and Adidas Benelux, C‑408/01, EU:C:2003:582, paragraph 29). In the present case, the Board of Appeal found that the relevant public would not establish a link between the marks at issue.
34      It must, therefore, be examined whether the Board of Appeal’s reasoning, on the basis of which it considered that, even if the earlier trade marks had a reputation, the relevant public would not establish a link between the signs at issue on the basis of the common element ‘land’, is vitiated by errors.
The goods at issue and the relevant public
35      It must be borne in mind that the trade mark applied for relates to ‘Electric vehicles (concept cars), except two-wheel vehicles’. Each of the earlier trade marks relates, in particular, either to ‘land vehicles’ or ‘vehicles’ or ‘Land motor-vehicles’. The Board of Appeal rightly concluded, without being challenged on that point by the parties, that the goods were identical because those terms overlapped.
36      The relevant public consists of the general public of the European Union, as regards the earlier EU trade marks, and the general public of the United Kingdom and Germany, as regards the earlier national trade marks. The Board of Appeal rightly found, without being challenged on that point by the parties, that the relevant public had an enhanced level of attention.
Whether the relevant public will establish a link between the marks at issue
37      The Board of Appeal based its assessment that the relevant public will not establish a link between the marks at issue in particular on the premiss that the common element ‘land’ in the marks at issue is descriptive and is weakly distinctive or even devoid of distinctive character. It must, therefore, be examined whether the Board of Appeal correctly assessed that element’s distinctive character.
–       The alleged descriptive character and the distinctive character of the common element ‘land’
38      The Board of Appeal found that the common element ‘land’ in the marks at issue referred clearly to one of the characteristics of the goods and that it classified those goods, namely as land vehicles as distinct to other vehicles to be used in the air, on water or on rails. It also considered that that word formed part of basic English and German vocabulary and that nothing in the file allowed the conclusion that the element ‘land’ would not be understood in the entire European Union by consumers of cars. The Board of Appeal concluded that that element was descriptive of the goods at issue.
39      The applicant submits that the element ‘land’ does not have a descriptive meaning for consumers in the European Union whose knowledge of languages does not comprise the English word ‘land’ or the German word ‘Land’. According to the applicant, a large part of the relevant public does not understand that word. In addition, it submits that the word ‘land’ is not understood as being a description of ‘land vehicles’, even in the perception of those consumers who understand the meaning of the word ‘land’.
40      EUIPO contends that it emerges clearly from the contested decision that the Board of Appeal considered it a well-known fact that the term ‘land’ was not only an English word but a very basic one, part of the elementary vocabulary which will be understood in the entire European Union by a large majority of the relevant public.
41      The intervener contends that the word ‘land’ is a basic English word referring to the solid part of the Earth’s surface and that consumers in the European Union will not have any difficulty understanding that word. According to the intervener, that term has found its way into all languages in the European Union. The intervener further contends that when used in connection with vehicles, that term will automatically be understood as descriptive, namely as the specification of the type of vehicle which is suitable for driving on land, in the countryside, on dirt roads and for recreation.
42      In the first place, it must be found that the intervener’s argument that the term ‘land’ has found its way into all languages in the European Union cannot be accepted. The Board of Appeal rightly found that it was an English and German word. The Opposition Division had also correctly found, in its decision, that ‘land’ is a Dutch word. It must, however, be noted that ‘land’ does not form part of the vocabulary of the majority of EU languages. Moreover, the intervener has not set out specifically, for example on the basis of extracts from dictionaries, how that term formed part of the vocabulary of all EU languages.
43      In the second place, it is apparent from the case-law that terms forming part of basic English vocabulary, such as, for example, the English terms ‘star’, ‘snack’ and ‘food’, are widely known by consumers throughout the European Union (see, to that effect, judgments of 21 January 2010, G-Star Raw Denim v OHIM — ESGW (G Stor), T‑309/08, not published, EU:T:2010:22, paragraph 32, and of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 52).
44      The question arises, therefore, of whether the English word ‘land’ forms part of basic English vocabulary likely to be widely known by consumers throughout the European Union.
45      In that regard, it must be found, first of all, that the English word ‘land’ has several meanings. In the contested decision, the Board of Appeal only referred to one of those meanings, that is, in essence, to the designation of the solid part of the Earth’s surface, as opposed to water or air. It cannot be considered that the word ‘land’, in that sense, is such a basic English word that it will be widely understood by consumers throughout the European Union.
46      As regards the intervener’s argument that the word ‘land’ is known worldwide because it forms part of the name of countries such as ‘England’, ‘Poland’, ‘Thailand’ or ‘Ireland’, it must be pointed out that, in those words, the element ‘land’ refers to a country, not to the solid part of the Earth’s surface as opposed to water or air. Even if the term ‘land’, in the sense of ‘country’, was widely known by consumers throughout the European Union, that in no way implies that they will consider that term a descriptive indication of the characteristics of land vehicles. It must be borne in mind, in that regard, that descriptive signs or indications are those which may serve in normal usage from the target public’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those covered by a mark (see, to that effect, judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39). Consequently, for a sign to be descriptive, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the category of goods and services in question or of one of their characteristics (see judgment of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited). It is not clearly apparent why the public should consider that a term meaning ‘country’ designates land vehicles or one of their essential characteristics.
47      As regards the intervener’s argument that the term ‘land’ is known worldwide because it is used in expressions such as ‘landmine’, ‘landscape’, ‘landslide’, ‘landline’, ‘fatherland’, ‘homeland’ or ‘Playland’ (name of an amusement park located in Rye, New York, United States), it is sufficient to note that none of those words may be considered to belong to basic English vocabulary likely to be widely known by consumers throughout the European Union. As regards the intervener’s reference to the German words ‘Landmode’ (traditional dress), ‘Landstraße’ (country road) and ‘auf dem Land’ (in the countryside), it must also be found that those words are not widely known by consumers throughout the European Union.
48      As regards the intervener’s argument that when used in connection with vehicles, the term ‘land’ will automatically be understood as descriptive, namely as the specification of the type of vehicle which is suitable for driving on land, in the countryside, on dirt roads and for recreation, it must be found that, by that argument, the intervener essentially refers to a possible meaning of the English word ‘land’ different from that selected by the Board of Appeal, namely the meaning ‘countryside’. However, it must be found that the English word ‘land’, in the sense of ‘countryside’, does not form part of basic English vocabulary widely known by consumers throughout the European Union either.
49      In its response, the intervener also refers, in a general manner, to the arguments in the pleadings it submitted during the administrative procedure before EUIPO, in order to complete the line of argument developed by it in the present action.
50      It should be noted that, under Article 21 of the Statute of the Court of Justice and Article 177(1)(d) of the Rules of Procedure of the General Court, applications must contain a brief statement of the pleas in law relied on. According to settled case-law, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see judgment of 11 December 2014, Oracle America v OHIM — Aava Mobile (AAVA CORE), T‑618/13, not published, EU:T:2014:1053, paragraph 14 and the case-law cited).
51      That case-law can be transposed to the response of the other party to opposition proceedings before a Board of Appeal who intervenes before the General Court. It is not for the General Court to take on the role of the parties by seeking to identify the relevant pleas and arguments in the documents they refer to (see judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 19 and the case-law cited).
52      It follows that the general reference, in the intervener’s response, to the pleadings it lodged with EUIPO is inadmissible.
53      Even if the reference, in paragraph 17 of the statement in intervention, to the intervener’s pleading lodged with the Board of Appeal on 26 September 2013 (‘the pleading of 26 September 2013’) and its annexes were considered sufficiently precise and therefore admissible, it must be found that the information contained in it is not in any event liable to call into question the fact that the English word ‘land’ is not widely known by consumers throughout the European Union in the sense of ‘solid part of the Earth’s surface’ or ‘countryside’.
54      The intervener included as an annex to the pleading of 26 September 2013 Google search results using the key word ‘land’ for internet sites in several languages. It stated, in its pleading of 26 September 2013, that French, Spanish or Italian speakers use the term ‘land’ descriptively as indicating ‘some kind of territory’. In that regard, the intervener refers to the use of the English word ‘land’ in the names of amusement parks such as Little Big Land and Didiland.
55      It must be found that, when the term ‘land’ is used in the name of an amusement park, it is either used, as the applicant states, to refer to a territory, or to refer to a ‘kingdom’ in the figurative sense of the word. Neither of those meanings of the word ‘land’ can be considered to designate land vehicles or one of their characteristics. Neither meaning is capable of referring to the fact that a land vehicle is meant as distinct to vehicles used on water or in the air, or to the fact that a vehicle may be used away from surfaced roads. In addition, the mere fact that the word ‘land’ appears on French-language, Spanish-language or Italian-language internet sites does not necessarily imply that that term is widely understood by French, Spanish and Italian consumers.
56      The intervener also argued, in its pleading of 26 September 2013, that the same considerations concerning the Google search results using the key word ‘land’ for internet sites in French, Spanish or Italian also applied to the Google search results for internet sites in Greek, Polish, Portuguese, Bulgarian, Slovenian and Hungarian. In that regard, the findings in paragraph 55 above apply by analogy. In addition, it must be found that the examples provided by the intervener do not relate to all EU languages.
57      As regards the Board of Appeal’s finding that ‘nothing in the file allows the conclusion that the element “land”, which is at least part of basic English and German vocabulary, especially in connection with the relevant goods, will not be understood in the entire European Union by consumers of cars’, the Court sets out its findings in the following paragraphs.
58      With the exception of certain terms forming part of basic English vocabulary, it cannot be assumed that English-language terms are widely known in the European Union. In the present case, the English word ‘land’, in particular in the sense of ‘solid part of the Earth’s surface’ or ‘countryside’, cannot be considered to form part of such a basic vocabulary of which it may be assumed that it is widely known by consumers throughout the European Union. Consequently, it was not for the applicant to adduce evidence to show that that word will not be understood by consumers of cars throughout the European Union.
59      At the hearing, EUIPO argued that the applicant conceded, during the administrative procedure, that the English and German word ‘land’ was very common and would be understood by the relevant public.
60      In that regard, it is to be noted that, in its pleading lodged with the Opposition Division on 20 March 2012 (‘the pleading of 20 March 2012’), the applicant stated, first, that the marks at issue were conceptually similar for that part of the relevant public which understood the meaning of the words ‘land’, ‘rover’ and ‘glider’. It added that a certain percentage of the public in non-English speaking Member States may not be familiar with the meaning of the words ‘rover’ and ‘glider’ and that many of the consumers in that group will be familiar with the meaning of the very common English and German word ‘land’, so that there would be partial conceptual similarity even for that part of the relevant public.
61      It must be found that the mere fact that many people in the group of consumers who do not understand the words ‘rover’ and ‘glider’ nevertheless understand the term ‘land’ does not exclude that a considerable proportion of the relevant public does not understand the word ‘land’ either. In addition, the applicant’s assertion appears in the part of the pleading of 20 March 2012 on the assessment of the conceptual similarity between the signs at issue, not as part of an assessment of the possible descriptive character of the element ‘land’. It is sufficient for the public to be aware of one of the possible meanings of the English word ‘land’ in order to find that there is some conceptual similarity between the signs at issue because that term is present in both signs. However, for a consumer who understands the English word ‘land’ as referring to a country or territory, that term is not descriptive of the goods at issue. It cannot, therefore, be considered that, in its pleading of 20 March 2012, the applicant conceded that the term ‘land’ was widely understood by consumers throughout the European Union as a reference to the solid part of the Earth’s surface or to the countryside.
62      In any event, it must be noted that the question of whether a term belongs to basic English vocabulary is a question of well-known facts. The restriction of the factual basis of EUIPO’s examination does not preclude it from taking into consideration, in addition to the facts which have been expressly put forward by the parties, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources (see judgments of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 67 and the case-law cited, and of 19 June 2014, Kampol v OHIM — Colmol (Nobel), T‑382/12, not published, EU:T:2014:563, paragraph 57 and the case-law cited). EUIPO is not bound in that regard by the parties’ arguments. It must be stated that Article 76(1) in fine of Regulation No 207/2009 cannot have the purpose of compelling the Opposition Division or Board of Appeal consciously to adopt a decision on the basis of factual hypotheses which are manifestly incomplete or contrary to reality (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 32).
63      In addition, the Opposition Division found that the public in some Member States would not understand the word ‘land’ and the applicant expressly endorsed that finding, in its pleading of 5 December 2013 before the Board of Appeal.
64      In those circumstances, EUIPO cannot properly rely on the applicant’s having conceded, in its pleading of 20 March 2012, that the English and German word ‘land’ was very common and would be understood by the relevant public.
65      It follows from the foregoing that the Board of Appeal erred in finding that the element ‘land’ was understood by the whole of the public throughout the European Union as a reference to the solid part of the Earth’s surface.
66      It must be held that for the part of the public targeted by the EU marks which does not understand the term ‘land’ as a reference to the solid part of the Earth’s surface or to the countryside, the element ‘land’ is not descriptive. Given that this represents a not inconsiderable part of the public targeted by the earlier EU trade marks, there is no need to examine the applicant’s arguments seeking to establish that the element ‘land’ is not descriptive of land vehicles even for consumers who are aware of its meaning.
67      As regards the distinctive character of the common element ‘land’ in the marks at issue, it is to be noted that the distinctive character designates the capacity to identify a product or service as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (see, to that effect, judgment of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 34). A mark and, by analogy, an element of a mark, which, in relation to the goods or services at issue, has descriptive character is therefore necessarily devoid of any distinctive character as regards those goods or services (see, to that effect, judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 21).
68      In the present case, the Board of Appeal did not put forward any argument, with the exception of the alleged descriptive character of the element ‘land’, in order to substantiate its conclusion that that element had no distinctive character. Nor did it put forward any additional argument in support of the finding that the distinctive character was at most weak.
69      For the not inconsiderable part of the relevant public which does not understand the word ‘land’, or at least does not understand it as a reference to the solid part of the Earth’s surface or to the countryside, there are no grounds for finding that that word has no inherent distinctive character or weak inherent distinctive character with regard to the goods at issue.
70      It follows that the Board of Appeal based its reasoning on an incorrect premiss in finding that, for the whole of the relevant public, that element was descriptive and weakly distinctive, or even devoid of distinctive character.
–       The Board of Appeal’s finding that any reputation of the earlier trade marks would be for the trade marks as registered and not for any individual element of them
71      In paragraph 55 of the contested decision, the Board of Appeal found that the common element ‘land’ in the marks at issue was not sufficient for the consumers to create a link between them, since any reputation of the earlier marks ‘would be for the trade marks as registered and not for any individual element’. That finding must be read in the light of the finding in paragraph 54 of the contested decision that the common element ‘land’ is weakly distinctive or devoid of distinctive character. The Board of Appeal considered, in essence, that the mere fact that a mark containing a non-distinctive or weakly distinctive element has acquired a reputation did not imply that that element is sufficient for the public to establish a link between that mark and another mark containing that same element.
72      The Board of Appeal’s argument is, therefore, also based on the incorrect premiss that, for the whole of the relevant public, the element ‘land’ is descriptive and weakly distinctive, if not devoid of distinctive character.
–       The Board of Appeal’s assessment of the degree of similarity between the marks at issue
73      The concept of the similarity of the marks at issue has the same meaning in the context of Article 8(5) of Regulation No 207/2009 as in the context of Article 8(1)(b) of that regulation (see, to that effect, judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 39).
74      The Board of Appeal considered that visually and phonetically the trade mark applied for and the earlier word marks were only similar to a low degree, because the relevant public would pay more attention to the second element of the signs at issue, due to the descriptive character of the element ‘land’.
75      The Board of Appeal’s assessment of the similarity of the trade mark applied for and the earlier EU trade marks is, therefore, based on the incorrect premiss that the element ‘land’ is descriptive for the whole of the relevant public.
76      The Board of Appeal therefore committed an error in the course of assessing the degree of similarity between those marks.
–       Conclusion on the Board of Appeal’s assessment of whether the relevant public will establish a link between the marks at issue
77      It follows from the foregoing that the Board of Appeal’s reasoning in finding that the relevant public will not establish a link between the marks at issue is vitiated by errors. First, it is based on the incorrect premiss that the element ‘land’ in the signs at issue will be understood by the whole of the public targeted by the earlier EU trade marks. Secondly, the assessment of the similarity of signs at issue, that is of one of the factors to be considered in the context of examining whether there is a link (see paragraph 31 above), is also vitiated by errors in that it is based on the same incorrect premiss.
78      It follows that the Board of Appeal’s reasoning, on the basis of which it found that, even if the earlier trade marks had a reputation, the relevant public would not establish a link between the signs at issue on the basis of the common element ‘land’, is vitiated by errors.
The Board of Appeal’s assessment of the earlier trade marks’ reputation
79      It is to be borne in mind that the conditions for the application of Article 8(5) of Regulation No 207/2009, referred to in paragraph 27 above, are cumulative. It follows that if the earlier trade marks did not have a reputation (third condition referred to in paragraph 27 above) Article 8(5) of Regulation No 207/2009 would not apply.
80      It is also to be noted that the Board of Appeal took the view, in paragraph 35 of the contested decision, that the probative value of the evidence submitted by the applicant did not allow any conclusions to be drawn as to whether the earlier trade marks enjoyed an enhanced distinctive character through use. If that assertion by the Board of Appeal had been established to the requisite legal standard, there would be no grounds for upholding the second plea in law, because, in that case, the errors identified in paragraph 77 above would have had no bearing on the outcome.
81      It must, however, be found that the Board of Appeal restricted itself to mere assertion in that regard, without explaining the reasons for which the 2 500 pages of documents provided by the applicant were not, in its view, sufficient to establish the earlier marks’ enhanced distinctive character or their reputation. It is not possible to hold that the Board of Appeal endorsed the Opposition Division’s findings in that regard, because the Opposition Division had arrived at the opposite result. Besides, EUIPO conceded, in its response, that the contested decision did not contain a comprehensive analysis of the evidence of enhanced distinctiveness submitted by the applicant.
82      In the light of the Board of Appeal’s failure to carry out a comprehensive analysis, it must be held that it did not establish that the probative value of the evidence submitted by the applicant was insufficient to demonstrate the earlier marks’ enhanced distinctive character or reputation. It is not, therefore, possible to reject the second plea in law on the ground that the applicant did not, in any event, establish the earlier marks’ reputation.
83      It follows that the Board of Appeal’s reasoning does not enable the ground for refusal provided for in Article 8(5) of Regulation No 207/2009 to be rejected. The Board of Appeal erred, therefore, in failing to examine in detail (i) the earlier trade marks’ reputation, (ii) the relevant factors for ascertaining whether the relevant public is likely to establish a link between the marks at issue (see paragraphs 30 and 31 above), and (iii) whether there was a risk that unfair advantage might be taken of the earlier marks’ distinctive character or repute or that there might be detriment to them.
Conclusion
84      It follows from all the foregoing that the Board of Appeal erred in rejecting the ground of opposition referred to in Article 8(5) of Regulation No 207/2009 without carrying out a comprehensive analysis of the conditions for the application of that provision. The second plea in law put forward by the applicant must, therefore, be upheld and, consequently, the contested decision annulled, and there is no need to examine the first and third pleas in law put forward by it.
Costs
85      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.
86      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
87      Since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 9 December 2014 (Case R 1415/2013-4);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Jaguar Land Rover Ltd;
3.      Orders Nissan Jidosha KK to bear its own costs.
Dittrich
Schwarcz
Tomljenović
Delivered in open court in Luxembourg on 16 February 2017.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.