JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
22 January 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark KENZO — Earlier Community word mark KENZO — Relative ground for refusal — Reputation — Article 8(5) of Regulation (EC) No 207/2009 — Duty to state reasons — Article 75 of Regulation No 207/2009 — Late submission of documents — Discretion of the Board of Appeal — Article 76(2) of Regulation No 207/2009)
In Case T‑393/12,
Kenzo Tsujimoto, residing in Osaka (Japan), represented by A. Wenninger-Lenz, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Kenzo, established in Paris (France), represented by P. Roncaglia, G. Lazzeretti and N. Parrotta, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 May 2012 (Case R 1659/2011-2) concerning opposition proceedings between Kenzo and Mr Kenzo Tsujimoto,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 September 2012,
having regard to the response of OHIM lodged at the Court Registry on 5 December 2012,
having regard to the response of the intervener lodged at the Court Registry on 27 December 2012,
having regard to the Court’s written question to the parties,
having regard to the observations lodged by the parties at the Court Registry on 2 and 11 June 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 4 October 2007, the applicant — Mr Kenzo Tsujimoto — filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The mark in respect of which registration was sought is the word sign KENZO.
3        The goods in respect of which registration was sought are in Class 33 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: ‘Wine; alcoholic beverages of fruit; western liquors (in general)’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 9/2008 of 25 February 2008.
5        On 22 May 2008, the intervener — Kenzo — filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for, in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier Community word mark KENZO, registered on 20 February 2001 under No 720 706 in respect of goods in Classes 3, 18 and 25, inter alia, and corresponding, for each of those classes, to the following description:
–        Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; toothpaste’;
–        Class 18: ‘Leather and imitations of leather, belts, bags, hand bags, trunks and suitcases, sling bags, travelling bags and other luggage; leashes, pocket wallets, briefcases, pouches (leatherware), purses, key cases (leatherware), boxes and cases of leather, imitations of leather, card holders, cheque book holders, attaché cases, make-up cases, travelling sets (leatherware); toilet and make-up bags (not fitted), animal skins, hides; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
–        Class 25: ‘Clothing, footwear (except orthopaedic footwear), headgear’.
7        The ground relied on in support of the opposition was that referred to in Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009).
8        By decision of 15 June 2011, the Opposition Division rejected the opposition.
9        On 11 August 2011, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10      By decision of 29 May 2012 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal. According to the Board, the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 were met in the circumstances. Regarding the first of those conditions, the Board of Appeal observed that the marks at issue were identical. Regarding the second condition, the Board found, contrary to the Opposition Division, that the intervener had shown that the earlier trade mark had a reputation. Regarding the third condition, the Board stated that it seemed highly likely that the mark applied for, for the use of which no due cause had been demonstrated, would ride on the coat-tails of the earlier trade 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. The Board therefore concluded that there was a risk that the use of the mark applied for would take unfair advantage of the reputation of the earlier trade mark for the purposes of Article 8(5) of Regulation No 207/2009.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of his action, the applicant raises three pleas in law, alleging respectively: (i) infringement of Article 8(5) of Regulation No 207/2009; (ii) infringement of Article 75 of that regulation; and (iii) infringement of Article 76(2) of that regulation.
14      It is necessary to begin by examining the second and third pleas in law.
Second plea in law: infringement of Article 75 of Regulation No 207/2009
15      The applicant claims to have argued before OHIM that he merely wished to use his forename — Kenzo — for a certain range of goods and that this constituted due cause for the use and registration of the mark applied for, for the purposes of Article 8(5) of Regulation No 207/2009. He maintains that, in failing to respond to that argument in the contested decision, the Board of Appeal acted in breach of its duty to provide a statement of reasons pursuant to Article 75 of that regulation.
16      Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to 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, that trade mark has a reputation in the European Union and where 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 trade mark.
17      Under Article 75 of that regulation, decisions of OHIM must state the reasons on which they are based.
18      According to settled case-law, that duty has the same scope as that enshrined in Article 296 TFEU. The statement of reasons required under that provision must clearly and unequivocally set out the reasoning of the body which adopted the act in question. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights, and to enable the European Union judicature to exercise its power to review the legality of the decision (see, to that effect, Case T‑7/04 Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 73 and the case-law cited).
19      Furthermore, the Boards of Appeal of OHIM are not obliged, in stating the reasons for the decisions which they are led to adopt, to take a position on all the arguments relied on by the parties before them; it is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (judgment of the General Court of 30 June 2010 in Case T‑351/08 Matratzen Concord v OHIM — Barranco Schnitzler (MATRATZEN CONCORD), not published in the ECR, paragraph 18).
20      In the present case, it must be found that, contrary to the applicant’s assertions, the Board of Appeal responded to his argument by finding that ‘no due cause [had] been demonstrated’ (paragraph 34 of the contested decision). Admittedly, that is a laconic response, but it is adequate.
21      Regulation No 207/2009 does not provide any unconditional right to register a surname as a Community trade mark (see, to that effect, judgment of the General Court of 25 May 2011 in Case T‑397/09 Prinz von Hannover v OHIM (Representation of a coat of arms), not published in the ECR, paragraph 29), let alone to register a forename as a trade mark. Consequently, the fact that the applicant’s forename is Kenzo is not enough to constitute due cause for the use of the mark applied for, for the purposes of Article 8(5) of Regulation No 207/2009.
22      The applicant is therefore wrong in his assertion that the Board of Appeal infringed Article 75 of Regulation No 207/2009.
23      It follows that the second plea in law must be rejected.
Third plea in law: infringement of Article 76(2) of Regulation No 207/2009
24      The applicant states that the Opposition Division had given the intervener a deadline of 18 May 2010 for providing proof of the earlier trade mark’s reputation, and submits that, in taking into account evidence submitted by the intervener after that date, the Board of Appeal had infringed Article 76(2) of Regulation No 207/2009.
25      In that regard, he submits that the contested decision does not show that the Board of Appeal used its discretion to decide whether it was appropriate to take into account the evidence submitted by the intervener or that it took into account the relevant circumstances for exercising that discretion, both of which it was required to do under case-law.
26      It should be noted that, according to the judgment of the Court of Justice of 3 October 2013 in Case C‑120/12 P Rintisch v OHIM (ECR, paragraph 32), the third subparagraph of Rule 50(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) expressly provides that, when examining an appeal directed against a decision of the Opposition Division, the Board of Appeal enjoys the discretion conferred under Article 76(2) of Regulation No 207/2009 to decide whether it is appropriate to take into account additional or supplementary facts and evidence not submitted within the periods prescribed or specified by the Opposition Division.
27      Where OHIM is called upon to adjudicate in the context of opposition proceedings, the taking into account of evidence or facts produced late is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see Rintisch v OHIM, paragraph 26 above, paragraph 38 and the case-law cited).
28      As a preliminary point, it should be observed that, contrary to the applicant’s assertions, it is not appropriate to construe the Board of Appeal’s discretion in the light of Rule 20(1) of Regulation No 2868/95, under which, if, until expiry of the period referred to in Rule 19(1) of that regulation, the opposing party has not proved the existence, validity and scope of protection of its earlier trade mark or earlier right, as well as its entitlement to file the opposition, the opposition is to be rejected as unfounded. Rather, it is the third subparagraph of Rule 50(1) of Regulation No 2868/95 which must be applied in proceedings before the Board of Appeal and not Rule 20(1) of that regulation (Rintisch v OHIM, paragraph 26 above, paragraph 29).
29      In the light of paragraph 38 of Rintisch v OHIM (paragraph 26 above), in order to determine whether the Board of Appeal was able to take into account the evidence produced before the Opposition Division after 18 May 2010, it is necessary to ascertain whether the Board considered that the evidence in question was likely to be genuinely relevant and whether — as the applicant claims — the stage of the proceedings and certain circumstances of the case argued against its being taken into account.
30      First, it should be noted that the Board of Appeal took into account the evidence filed with the Opposition Division after 18 May 2010, indicating that, given that the use of a trade mark is a relevant factor in determining the reputation of that mark, the evidence in question, which was mainly intended to provide proof of use of the earlier trade mark, also constituted supplementary evidence of that mark’s reputation (paragraph 25 of the contested decision). It also observed that some of the evidence was critical for the assessment of that reputation (paragraph 27 of the contested decision). Lastly, the Board stated that the evidence produced before the Opposition Division after 18 May 2010 confirmed the evidence of the earlier trade mark’s reputation submitted before that date (paragraph 28 of the contested decision). In so doing, the Board of Appeal exercised its discretion under Article 76(2) of Regulation No 207/2009 to decide that it was appropriate to take that evidence into consideration and, in finding that such evidence was genuinely relevant for the purposes of assessing the earlier trade mark’s reputation, provided a statement of reasons for taking that evidence into account.
31      Next, regarding the applicant’s arguments concerning the stage of the proceedings and certain circumstances arguing against the evidence produced before the Opposition Division after 18 May 2010 being taken into account, the following points should be noted: first, it can be seen from the contested decision that some of the evidentiary documents in question were enclosed with the observations which the intervener had lodged with the Opposition Division on 23 November 2010 and that other evidentiary documents had been submitted by the intervener on 11 October 2010 during parallel opposition proceedings between the same parties (paragraph 26 of the contested decision). All of the evidence in question had therefore been submitted before the Opposition Division’s decision was made and before proceedings had begun before the Board of Appeal. Accordingly, the applicant cannot claim that the evidence could not be taken into account because it was submitted at a late stage in the proceedings. Furthermore, the applicant does not dispute the Board of Appeal’s finding that he had all of that evidence in his possession and had all the information needed to identify that evidence and to inspect its contents (paragraph 26 of the contested decision).
32      Secondly, the applicant’s argument that, since the intervener ought to have known that the evidence filed before 18 May 2010 was insufficient, the evidence submitted after that date could not be taken into account cannot succeed. In the present case, the intervener had filed numerous evidentiary documents before the end of the prescribed period to demonstrate the earlier trade mark’s reputation. In particular, it had submitted press clippings and advertisements, relating to the earlier trade mark, taken from reputed EU magazines, the list of the earlier trade mark’s points of sale worldwide and the list of KENZO trade marks worldwide (paragraph 6 of the contested decision). It must therefore be held that the intervener had made genuine attempts to provide proof of the earlier trade mark’s reputation and that the applicant cannot claim that the intervener should have known that the evidence filed before 18 May 2010 was insufficient. It should also be borne in mind that it was within the Board of Appeal’s discretion to decide whether to take into account evidence supplementing the evidence filed before 18 May 2010.
33      Thirdly, the applicant’s argument that the Board of Appeal’s discretion is limited to the extent that it must be interpreted in the light of the fundamental importance of complying with deadlines fixed by OHIM also cannot succeed: since evidence submitted after the expiry of such deadlines may be refused, parties are always encouraged to comply with them.
34      Fourthly, it is appropriate to reject the applicant’s argument that the Board of Appeal could not, in its assessment of the earlier trade mark’s reputation, take the evidence produced before the Opposition Division by the intervener after 18 May 2010 into account because that evidence had been submitted as proof of use of the earlier trade mark rather than as proof of its reputation. The Board of Appeal rightly indicated that the use of a trade mark is a relevant factor in determining the reputation of that mark (paragraph 25 of the contested decision). Evidence of use of the earlier trade mark could therefore also be used to demonstrate that mark’s reputation, as had also been asserted by the intervener before the Board of Appeal (paragraph 14 of the contested decision).
35      Lastly, the fact that the evidence filed after 18 May 2010 was not new and could therefore have been filed before that date is irrelevant: it is not necessary that the party concerned be unable to submit evidence within the prescribed time-limits in order for additional evidence submitted after expiry of those time-limits to be taken into account (judgment in Case C‑610/11 P Centrotherm Systemtechnik v OHIM [2013] ECR, paragraph 117).
36      The applicant is therefore wrong in his assertion that, in taking into account the evidence filed with the Opposition Division by the intervener after 18 May 2010, the Board of Appeal infringed Article 76(2) of Regulation No 207/2009.
37      It follows that the third plea in law must be rejected.
First plea in law: infringement of Article 8(5) of Regulation No 207/2009
38      The first plea in law is divided into three parts, alleging respectively that there is no proof that the earlier trade mark has a reputation; that there is no risk of an unfair advantage; and that there is due cause for the use of the mark applied for.
First part: no proof that the earlier trade mark has a reputation
39      First, the applicant submits that the Board of Appeal could not, in its assessment of the earlier trade mark’s reputation, take into account the evidence submitted by the intervener after 18 May 2010.
40      In that regard, it is sufficient to recall that the examination of the third plea in law shows that the Board of Appeal could take that evidence into account.
41      Secondly, the applicant argues, in essence, that the Board of Appeal should not have taken into account the evidence produced before the Opposition Division before 18 May 2010 to demonstrate the earlier trade mark’s reputation, because that evidence was not accompanied by any explanation concerning the duration of use of the earlier trade mark, the geographical scope of the advertising campaigns connected with that mark, the specific level of awareness of the earlier trade mark’s reputation, the intervener’s turnover, or its market share.
42      In that regard, it should be noted that the applicant has not specified the legal provision on which he bases his argument that, in order to be taken into account, the evidence submitted by the intervener had to be accompanied by explanations.
43      In any event, the evidence lodged with the Opposition Division by the intervener before 18 May 2010 to demonstrate the reputation of its trade mark was accompanied by a brief description. The description indicated for most of that evidence the relevant period or the geographical scope. Thus, for example, Annex 7 was described in the following way: ‘press clippings from various EU countries ... between 2006 and 2010, published in reputed EU magazines ... between 2008 and 2010, such as Vogue, Vanity Fair, L’Uomo, and so on ...’
44      Moreover, the intervener expanded on that explanation in its appeal before the Board of Appeal.
45      Thus, it argued that it had provided the Opposition Division with a monograph dedicated to the creator of the earlier trade mark, which belongs to the same series of monographs as those dedicated to Gucci, Valentino, Versace, Chanel and Dior, all of whom are legendary figures in the world of fashion.
46      Furthermore, the intervener pointed out that the 400 pages relating to advertising campaigns for the earlier trade mark which it had produced before the Opposition Division indicated the location and duration of each advertising campaign launched over a ten-year period (2000 to 2010). It stated that those 400 pages showed that advertisements relating to goods covered by the earlier trade mark had been published in the Czech Republic, Denmark, Germany, Spain, France, Croatia, Cyprus, the Netherlands, Slovenia and the United Kingdom. It added that those advertisements had been published in numerous world-leading magazines relating to fashion (such as Elle, Men’s Health, Playboy and Vogue), as well as in certain leading popular magazines in Europe (such as El Mundo, Figaro, Le Monde, Vanity Fair and Cosmopolitan). According to the intervener, those advertisements were clear evidence of a sustained and intensive media campaign.
47      Lastly, the intervener stated that the list of the earlier trade mark’s points of sale and the list of KENZO trade marks registered worldwide clearly showed that the reputation of the earlier trade mark was established in a significant part of the European Union at the time when the notice of opposition was filed.
48      Thirdly, the applicant submits that the evidence filed before 18 May 2010 was not sufficient to demonstrate the earlier trade mark’s reputation.
49      In that regard, it is sufficient to note that, in order to assess the earlier trade mark’s reputation, the Board of Appeal did not rely solely on the evidence lodged with the Opposition Division before that date (paragraph 28 of the contested decision).
50      It follows that the first part of the first plea in law must be rejected.
Second part: no risk of an unfair advantage
51      The applicant submits that, despite the fact that the burden of proof fell to be discharged by the intervener, it did not determine what specific kind of unfair advantage or detriment might be expected as a result of the use of the mark applied for. Instead, he argues, the intervener confined itself to making speculations, which are not sufficient to demonstrate that there is a potential detriment or unfair advantage. In having none the less concluded that there was a risk of unfair advantage or detriment, the Board of Appeal infringed Article 8(5) of Regulation No 207/2009.
52      In order to determine whether the use of the contested sign takes unfair advantage of the distinctive character or the repute of the earlier trade 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 trade mark’s reputation and the degree of distinctiveness of that mark, the degree of similarity between the marks at issue, and the nature of and degree of closeness between the goods or services concerned (see judgment of the General Court of 14 December 2012 in Case T‑357/11 Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), not published in the ECR, paragraph 38 and the case-law cited).
53      In the present case, first, it is common ground that the marks at issue are identical.
54      Secondly, it is common ground that the earlier trade mark has inherent distinctiveness.
55      Thirdly, it should be borne in mind that the Board of Appeal used all the evidence lodged with the Opposition Division by the intervener as its basis for concluding that the earlier trade mark’s reputation was substantial (paragraphs 28 and 29 of the contested decision).
56      Fourthly, regarding the nature of and degree of closeness between the goods concerned, the Board of Appeal found that it was clear from the evidence filed by the intervener that it largely placed its products at the high end of the market, where the targeted consumer has a more sophisticated taste than the average consumer, and that the goods covered by the mark applied for included high-quality wines and cognac intended for equally sophisticated consumers. The Board rightly inferred from those circumstances that there could be little doubt that it was possible to establish a link between those goods, since they all projected images of luxury, glamour, good taste, success, and social status (paragraph 33 of the contested decision).
57      In addition, it should be observed that the intervener produced evidence before the Board of Appeal that advertisements for goods covered by the earlier trade mark had been published in prestigious magazines (such as Vogue and Vanity Fair) and that goods had been sold under the earlier trade mark in prestigious shops (such as Harrods). Therefore, the Board of Appeal rightly found that the trade mark in question had an ‘undisputable allure’, which could be transferred to other luxury goods and, by extension, to the goods covered by the mark applied for, such as cognac, champagne or wine, which can be of high quality (paragraph 33 of the contested decision).
58      Therefore, contrary to the applicant’s assertions, the Board of Appeal did not rely on speculation, but used the evidence filed by the intervener as its basis for concluding that there was a risk that the use of the mark applied for would take unfair advantage of the earlier trade mark’s reputation for the purposes of Article 8(5) of Regulation No 207/2009.
59      It follows that the second part of the first plea in law must be rejected.
Third part: there is due cause for the use of the mark applied for
60      The applicant claims that in his observations before the Opposition Division he argued that the mark applied for corresponded to his forename and that it was therefore applied for and used with due cause. He maintains that the Board of Appeal did not take that argument into account and that, in failing to do so, it infringed Article 8(5) of Regulation No 207/2009.
61      That argument has already been refuted in paragraph 22 above. It follows that the third part of the first plea in law must be rejected.
62      Therefore, the first plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
63      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Mr Kenzo Tsujimoto to pay the costs.
Van der Woude
Wiszniewska-Białecka
Ulloa Rubio
Delivered in open court in Luxembourg on 22 January 2015.
[Signatures]
* Language of the case: English.