Source: EURLEX
Language: en
Format: md

Case T‑629/16

Shoe Branding Europe BVBA

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU figurative mark consisting of two parallel stripes on a shoe — Earlier EU figurative mark representing three parallel stripes on a shoe — Relative ground for refusal — Damage to reputation — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Ninth Chamber) of 1 March 2018

1. 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

   (Council Regulation No 207/2009, Art. 8(5))
2. 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 — Reputation of the mark in the Member State or the EU — Concept of reputation — Criteria for assessment

   (Council Regulation No 207/2009, Art. 8(5))
3. 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 — Reputation of the mark in the Member State or the EU — Use of a trade mark as part of another trade mark and reputation

   (Council Regulation No 207/2009, Art. 8(5))
4. 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 — Link between the marks — Criteria for assessment

   (Council Regulation No 207/2009, Art. 8(5))
5. 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

   (Council Regulation No 207/2009, Art. 8(5))
6. 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 — Concept of taking unfair advantage

   (Council Regulation No 207/2009, Art. 8(5))
7. 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 — Criteria for assessment

   (Council Regulation No 207/2009, Art. 8(5))
8. 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 — Use of the trade mark sought without just grounds — Meaning

   (Council Regulation No 207/2009, Art. 8(5))
9. 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 — Use of the trade mark sought without just grounds — Criteria for assessment

   (Council Regulation No 207/2009, Art. 8(5))
10. 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 — Figurative mark consisting of two parallel stripes on a shoe and a figurative mark representing three parallel stripes on a shoe

    (Council Regulation No 207/2009, Art. 8(5))

1. See the text of the decision.

   (see para. 24)
2. In order to enjoy the protection provided for in Article 8(5) of Regulation No 207/2009 on the European Union trade mark, a registered trade mark must be known by a significant part of the public concerned by the products or services which it covers.

   In examining this condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

   Territorially, the condition as to reputation must be considered to be fulfilled when the EU trade mark has a reputation in a substantial part of the territory of the European Union. In certain cases, the territory of a single Member State may be considered to constitute a substantial part of that territory.

   (see paras 25-27)
3. See the text of the decision.

   (see para. 28)
4. See the text of the decision.

   (see paras 29-34)
5. See the text of the decision.

   (see paras 38-42)
6. See the text of the decision.

   (see paras 43, 44)
7. See the text of the decision.

   (see paras 45-51)
8. The question of whether there is due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively.

   Nevertheless, it must be recalled that the purpose of Regulation No 207/2009 on the European Union trade mark is generally to strike a balance between the interest which the proprietor of a trade mark has in safeguarding the functions inherent in that mark, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other.

   In the system for the protection of marks introduced by Regulation No 207/2009, the interests of a third party in using, in the course of trade, a sign identical or similar to an earlier mark with a reputation and in having it registered as an EU trade mark must inter alia be considered, in the context of Article 8(5) of that regulation, in the light of the possibility for the user of the mark applied for to claim ‘due cause’.

   It follows that the concept of ‘due cause’ should not be interpreted as being limited to objectively overriding reasons, but may also relate to the subjective interests of a third party already using a sign which is identical or similar to the earlier mark with a reputation and wishing to register it as an EU trade mark.

   That is why the Court has held that the proprietor of a trade mark could be obliged, pursuant to the concept of ‘due cause’, to tolerate the use by a third party of a sign similar to that mark, including in relation to a product or service identical to that for which that mark was registered, provided that, first, it had been demonstrated that that sign had been used before that mark was filed and, second, that the use of that sign had been in good faith.

   The Court has stated that, in order to assess, in particular, whether the third party in question had used the sign similar to the mark with a reputation in good faith, it was appropriate to take into account, inter alia, (i) how that sign was accepted by, and what its reputation was with, the relevant public, (ii) the degree of proximity between the goods and services for which that sign had originally been used and the goods and services for which the mark with a reputation had been registered, (iii) when that sign was first used for a product identical to that for which that mark was registered, and when that mark acquired its reputation and, (iv) the economic and commercial significance of the use for that product of the sign which was similar to that mark.

   (see paras 52-57)
9. The earlier use by a third party of a sign or a mark applied for which is identical or similar to an earlier mark with a reputation could be classified as ‘due cause’ within the meaning of Article 8(5) of Regulation No 207/2009 on the European Union trade mark and could make it possible for that third party not only to continue to use that sign, but also to have it registered as an EU trade mark, even though the use of the mark applied for is capable of taking advantage of the repute of the earlier mark.

   However, for that to be so, the use of the mark applied for must satisfy a number of conditions enabling it to be established what the reality of that use was and whether the proprietor of the mark applied for acted in good faith.

   First, the sign corresponding to the mark applied for must have been put to real, effective use.

   Second, the use of that sign must, in principle, have commenced at a date prior to the filing of the earlier mark with a reputation or, at least, before that mark acquired its reputation.

   Third, the sign corresponding to the mark applied for must have been used throughout the territory for which the earlier mark with a reputation was registered. It follows that, where the earlier mark with a reputation is an EU trade mark, the sign corresponding to the mark applied for must have been used throughout the territory of the European Union.

   Fourth, that use must not, in principle, have been challenged by the proprietor of the earlier mark with a reputation. In other words, the mark applied for and the earlier mark with a reputation must have coexisted peacefully in the territory concerned.

   (see paras 58-63)
10. See the text of the decision.

    (see paras 65-217)

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