European Union Intellectual Property Office v John Mills Ltd.
Date: 2020-11-11
55


In that regard, it must be recalled that, according to settled case-law of the Court, the interpretation of a provision of EU law requires account to be taken not only of its wording, but also of its context, and the objectives and purpose pursued by the act of which it forms part. The legislative history of a provision of EU law may also reveal elements that are relevant to its interpretation (judgment of 25 June 2020, A and Others(Wind turbines at Aalter and Nevele), C‑24/19, EU:C:2020:503, paragraph 37 and the case-law cited).
64


Furthermore, since the European Union is a party to the TRIPS Agreement, it is under an obligation to interpret its trade-mark legislation, so far as possible, in the light of the wording and purpose of that agreement (judgment of 16 November 2004, Anheuser-Busch, C‑245/02, EU:C:2004:717, paragraph 42 and the case-law cited). In particular, Article 2(1) of the TRIPS Agreement provides that, with respect to Parts II, III and IV of that agreement, the States which are parties thereto must comply with Articles 1 to 12 and 19 of the Paris Convention.
92


Secondly, it should be observed that, while the application of Article 8(3) of Regulation No 207/2009 stems from, inter alia, the similarity between the marks at issue, the specific condition for the protection guaranteed by that provision is that the application for registration must have been made by the agent or representative of the proprietor of the earlier mark, in his own name and without the proprietor’s consent, and without that agent or representative justifying his actions. Consequently, the similarity between the marks at issue for the purposes of the application of Article 8(3) of Regulation No 207/2009 is not to be assessed on the basis of the existence of a likelihood of confusion, that condition being specific to Article 8(1)(b) of that regulation (see, by analogy, judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraphs 34 to 36).
98


In so far as John Mills criticises the Board of Appeal on the ground that it found that Article 8(3) of Regulation No 207/2009 was applicable in the present case, even though not all of the goods to which the application for registration of the contested mark refers were identical to those covered by the earlier mark, it should be borne in mind that, even though that provision does not mention the goods or services for which the mark is sought, the essential function of a mark is to indicate the commercial origin of the goods or services covered (judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?), C‑541/18, EU:C:2019:725, paragraph 18).
100


Furthermore, in the present case, it should be noted, first, that John Mills does not dispute the fact that the ‘face powder featuring mineral enhancements’ covered by the earlier mark is identical to the ‘cosmetics’ and ‘preparations for … care of the skin’ covered by the application for registration of the contested mark. Secondly, in paragraph 31 of the decision at issue, the Board of Appeal observed, inter alia, that, as regards the remaining goods covered by the marks at issue, they might be made of the same ingredients, they were often produced by the same companies and they were often offered together in drugstores and the same retail store aisles. According to the Court’s settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 48 and the case-law cited).