Case T‑61/16

The Coca-Cola Company

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU figurative mark Master — Earlier European Union figurative marks Coca-Cola and earlier national figurative mark C — Relative ground for refusal — Unfair advantage taken of the reputation of earlier marks — Evidence relating to the commercial use, outside the European Union, of a sign comprising the mark applied for — Logical inferences — Decision taken following the annulment by the General Court of an earlier decision — Article 8(5) and Article 65(6) of Regulation (EC) No 207/2009 (now Article 8(5) and Article 72(6) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Eighth Chamber), 7 December 2017

EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Review of the legal classification given to the facts of the dispute

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage — Use outside of the European Union

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark — Criteria for assessment

See the text of the decision. (see paras 34, 35)

It is apparent from the wording of Article 8(5) of Regulation No 207/2009 on the European Union trade mark that its application is subject to the following conditions: first, the fact that the marks at issue are identical or similar; secondly, the fact that the earlier trade mark invoked in opposition has a reputation; thirdly, the existence of a risk that 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 mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable. With respect to the third condition, it should be recalled that the risk of unfair advantage being taken of the distinctive character or the repute of the earlier mark is established where there is an attempt at clear exploitation and free-riding on the coat-tails of a famous mark; that taking unfair advantage of that distinctive character or repute is, therefore, behind the idea of ‘the risk of free-riding’. In other words, the risk of free-riding is the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods will be made easier by that association with the earlier mark with a reputation. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include, inter alia, the strength of the mark’s reputation and the degree of distinctiveness of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the mark’s reputation and the degree of its distinctiveness, the Court of Justice has held that the stronger the mark’s distinctiveness and reputation, the easier it will be to accept that detriment has been caused to it. It is further settled case-law that the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctiveness or repute of the mark, or is, or will be, detrimental to them. (see paras 64-66)

The proprietor of the earlier mark who relies on the protection granted by Article 8(5) of Regulation No 207/2009 on the European Union trade mark is required to adduce evidence that use of the later mark takes unfair advantage of the distinctiveness or repute of the earlier mark. To that end, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark, as confirmed by the wording of that provision in the conditional. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. However, the proprietor of the earlier mark must prove that there is a serious risk that such an injury will occur in the future or, in other words, adduce prima facie evidence of a non-hypothetical future risk of unfair advantage or detriment. Article 8(5) of Regulation No 207/2009 entails a prospective analysis of the non-hypothetical future risk of free-riding in the European Union on the basis of the elements currently available, not the determination of current free-riding within the Union. While the risk of dilution (that is the risk of detriment caused to the distinctive character of the earlier marks) entails that a change in the economic conduct of the average consumer of the goods or services for which the earlier trade mark is registered subsequent to the use of the later mark is proved, such evidence is not required with respect to the risk of free-riding (that is the risk of unfair advantage being taken of the distinctive character or reputation of the earlier marks). Moreover, the risk of free-riding is assessed with reference to average consumers of the goods and services covered by the later mark, and not by the earlier mark, in so far as what is prohibited is the advantage taken of that mark by the proprietor of the later mark. According to settled case-law, a finding of a risk of free-riding may, like a finding of a risk of dilution or a risk of tarnishment, be established, in particular, on the basis of logical deductions — so long as they are not mere suppositions — resulting from an analysis of the probabilities and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case. In particular, the Court of Justice has ruled that, in the general assessment intended to determine whether unfair advantage was being taken of the distinctive character or the repute of an earlier trade mark, it was necessary, in particular, to take account of the fact that the use of packaging and bottles similar to those of the fragrances that were being imitated was intended to take advantage, for promotional purposes, of the distinctiveness and the repute of the marks under which those fragrances were marketed. The Court also stated that, where a third party was attempting, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of the mark with a reputation in order to create and maintain the image of that mark, the advantage resulting from such use had to be considered to be an advantage that had been unfairly taken of the distinctive character or the repute of the earlier trade mark. Finally, the General Court has repeatedly held that it was possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment or of unfair advantage being taken by the mark applied for was so obvious that the opposing party did not need to put forward or adduce evidence of any other fact to that end. (see paras 67-70, 102, 106)

It follows from the case-law of the Court, in the context of a mark’s acquisition of distinctiveness through use, and of the maintenance of a mark by evidence of genuine use, that, in general, the ‘use’ of a mark, in its literal sense, generally encompasses both its independent use and its use as part of another mark taken as a whole or in conjunction with that other mark. The Court has also stated that a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue. (see para. 75)

The principle of territoriality in trade mark law entails that it is the law of the State — or of the union of States — where protection of a trade mark is sought which determines the conditions of that protection. It must be stated that the principle of territoriality also entails that the court of a State or of a union of States has jurisdiction (in whole or in part) in respect of acts of infringement committed or threatened within the territory of that State or that union of States, to the exclusion of third States. The principle of territoriality in trade mark law does not in any way preclude taking into account instances of use of the mark applied for outside the European Union as a basis for a logical inference relating to the likely commercial use of the mark applied for in the Union, in order to establish the existence of a risk that unfair advantage will be taken, in the Union, of the reputation of an earlier EU trade mark within the meaning of Article 8(5) of Regulation No 207/2009 on the European Union trade mark. Thus, evidence of actual use anywhere in the world may be indicative of the manner in which the mark applied for might be used in the European Union, so that such use outside of the Union may help to determine whether use of the mark applied for is likely to take unfair advantage of the reputation of the earlier marks. It may therefore be logically inferred from an application for registration of an EU trade mark that its proprietor intends to market its goods or services in the European Union. (see paras 81, 88, 95, 96)

See the text of the decision. (see paras 92-108)

Under Article 65(2) of Regulation No 207/2009 on the European Union trade mark (now Article 72(2) of Regulation 2017/1001), the Court is called upon to assess the legality of the decisions of the Boards of Appeal of EUIPO by reviewing the way in which they have applied EU law, specifically in the light of the factual evidence placed before those Boards. Accordingly, within the constraints in that article, as interpreted by the Court, the General Court may carry out a full review of the legality of decisions of the Boards of Appeal of EUIPO, if necessary examining whether the Board of Appeal concerned made a correct legal characterisation of the facts of the dispute or whether its appraisal of the facts placed before it was flawed. Where it is called upon to assess the legality of a decision of a Board of Appeal of EUIPO, the General Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the General Court. (see paras 110, 111)