Case T‑518/13

Future Enterprises Pte Ltd

v

European Union Intellectual Property Office

‛European Union trade mark — Invalidity proceedings — European Union word mark MACCOFFEE — Earlier European Union word mark McDONALD’S — Article 53(1)(a) and Article 8(5) of Regulation (EC) No 207/2009 — Family of marks — Taking unfair advantage of the distinctive character or repute of the earlier mark — Declaration of invalidity’

Summary — Judgment of the General Court (First Chamber), 5 July 2016

EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence 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 — Genuine future risk of undue profit or damage

EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence 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 — Concept

EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence 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 — Criteria for assessment

EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Condition — Link between the marks — Criteria for assessment — Existence of a family of earlier marks — Conditions

See the text of the decision. (see paras 14, 15)

See the text of the decision. (see paras 20, 21, 37)

There is a serious risk that unjustified use of the word mark MACCOFFEE, registered as an EU trade mark for goods in Classes 29, 30 and 32 of the Nice Agreement, would take unfair advantage of the repute of the earlier word mark McDONALD’S, previously registered as an EU word mark for goods and services in Classes 29, 30, 32 and 42 of that agreement. The McDONALD’S trade mark has a considerable reputation in the European Union for fast-food restaurant services. Its repute extends to characteristic elements of the ‘Mc’ family of trade marks. The McDONALD’S trade mark is the original trade mark of the family, to which all the derived marks are connected by a common feature, namely the prefix ‘mc’, and from which they are all separated by the same type of final element, which refers to one of the foodstuffs on the menu of the fast-food restaurants. Thus, the prefix ‘mc’ had acquired its own distinctive character in relation to fast-food restaurant services and goods on the menu of fast-food establishments, at least in part of the territory of the European Union, so that that prefix is capable of characterising the existence of a family of marks. The MACCOFFEE trade mark, conceptually similar to the McDONALD’S trade mark and reproducing the same structure, is capable of being associated with the ‘Mc’ family of trade marks. Concerning the goods and services for which the trade marks at issue are registered, they present a certain degree of similarity by reason of the close links existing between them. In that regard, the relevant public, namely the EU public or a substantial part of it, could establish a mental link between the marks at issue, in so far as it could be attracted by the fact that the contested mark has practically the same prefix and reproduces the same structure as the McDONALD’S trade mark and could associate that mark with the ‘Mc’ family of marks. (see paras 31, 63, 64, 67, 85, 99, 101, 102, 104, 105 and 108)

The establishment, on the part of the public concerned, of a link between the trade marks at issue, must be assessed globally, taking into account all factors relevant to the circumstances of the case. One of the relevant factors in that regard is the existence of a family of earlier marks. Where an application for a declaration of invalidity of a mark is based on the existence of several previous marks possessing common characteristics which make it possible for them to be regarded as part of a family, the establishment, on the part of the public concerned, of a link between the mark in respect of which a declaration of invalidity is sought, and the earlier marks may result from the fact that the former has characteristics capable of associating it with the family consisting of the latter. Several marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ when, inter alia, they reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark. The relevant public cannot be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family, to detect common characteristics in such a family and to establish a link between that family and another trade mark containing elements that are similar to those characteristics. Therefore, for the relevant public to establish a link between a trade mark in respect of which a declaration of invalidity is sought and a ‘family’ of earlier trade marks, the earlier marks forming part of that family must be present on the market. It is therefore for the proprietor of the earlier marks, which is applying to have the later EU trade mark declared invalid, to provide evidence of the actual use of a sufficient number of those marks as to be capable of constituting a ‘family’ of marks and, therefore, of demonstrating that such a family exists for the purposes of assessing whether the relevant public establishes a link between the mark in respect of which a declaration of invalidity is sought and the earlier marks which make up that ‘family’ or even simply between the mark in respect of which a declaration of invalidity is sought and the earlier mark originating from that same ‘family’. (see paras 42-45)

To assess whether a trade mark has been put to actual use in a specific case, an overall assessment of the evidence produced must be carried out, taking account of all the relevant factors in the case. In such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. Actual use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence. However, it follows from Rule 22(4) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, which applies mutatis mutandis in invalidity proceedings pursuant to Rule 40(6) of that regulation, that the evidence of use is, in principle, confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing sworn or affirmed, as referred to in Article 78(1)(f) of Regulation No 207/2009 on the EU trade mark. (see paras 52-54)

See the text of the decision. (see paras 88, 93, 95)

See the text of the decision. (see para. 94)