1 By his appeals, Mr Kenzo Tsujimoto asks the Court to set aside the judgments of the General Court of the European Union of 2 December 2015, Tsujimoto v OHIM - Kenzo (KENZO ESTATE) (T‑414/13, not published, EU:T:2015:923), and of 2 December 2015, Tsujimoto v OHIM - Kenzo (KENZO ESTATE) (T‑522/13, not published, EU:T:2015:922) (together, ‘the judgments under appeal’), by which the General Court dismissed his actions seeking the annulment of the decisions of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 May 2013 (Case R 333/2012-2), and of 3 July 2013 (Case R 1363/2012-2), respectively, both concerning opposition proceedings between Kenzo and Mr Tsujimoto.
2 The applications for registration at issue were made by the appellant, one under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (‘Regulation No 40/94’), the other under Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), which came into force on 13 April 2009, codifying and repealing Regulation No 40/94.
3 Article 8(5) of Regulation No 207/2009, that article being headed ‘Relative grounds for refusal’, provides: ‘Upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not 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 [EU] trade mark, the trade mark has a reputation in [the European Union] and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where 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 trade mark.’
4 Article 76(2) of that regulation, that article being headed ‘Examination of the facts by the Office of its own motion’, provides: ‘The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’
5 The rules implementing Regulation No 40/94 are laid down by Commission Regulation (EC) No 2868/95 of 13 December 1995 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4) (‘the implementing regulation’). The implementing regulation also applies to Regulation No 207/2009.
6 Rule 19(1) and (2) of the implementing regulation, that rule being headed ‘Substantiation of the opposition’, provide: ‘(1) The Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1). (2) Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence: ...’
7 Rule 20(1) of the implementing regulation, that rule being headed ‘Examination of the opposition’, provides: ‘If until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded.’
8 The third subparagraph of Rule 50(1) of the implementing Regulation provides: ‘Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 74(2) of the Regulation.’
9 On 21 January 2008 the appellant filed an application for international registration designating the European Union, notification of which was given to EUIPO on 13 March 2008, pursuant to Regulation No 40/94.
10 The mark in respect of which registration is sought is the word sign KENZO ESTATE.
11 The goods in respect of which international registration is 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)’.
12 The application for registration was published in Community Trade Marks Bulletin No 12/2008 of 17 March 2008.
13 On 16 December 2008 Kenzo filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to the international registration of the mark applied for in respect of all the goods referred to in paragraph 11 above.
14 The opposition was based on the earlier Community word mark KENZO, which was registered on 20 February 2001 under number 720706 in respect of goods in, inter alia, Classes 3, 18 and 25 of the Nice Agreement 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’, and - Class 25: ‘Clothing, footwear (except orthopaedic footwear), headgear’.
15 The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation No 207/2009.
16 By decision of 20 December 2011, the Opposition Division rejected the opposition.
17 On 15 February 2012 Kenzo filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
18 By decision of 22 May 2013, the Second Board of Appeal of EUIPO upheld the appeal. According to the Board of Appeal, the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 were satisfied in the present case. As regards the first condition, the Board of Appeal observed that the marks at issue were highly similar for a non-negligible part of the relevant public. As regards the second condition, the Board found, contrary to the Opposition Division, that Kenzo had established that the earlier trade mark had a reputation. As regards the third condition, the Board found that it seemed highly likely that the mark in respect of which registration was sought, 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 that mark in order to create and maintain the image of that mark. The Board therefore concluded that there was a risk that the use of the protection applied for in respect of the international registration within the European Union would take unfair advantage of the reputation of the earlier mark, within the meaning of Article 8(5) of Regulation No 207/2009.
19 By application lodged at the Registry of the General Court on 8 August 2013, the appellant brought an action for annulment of the contested decision. In support of his action, the appellant relied on two pleas in law: (i) infringement of Article 76(2) of Regulation No 207/2009, and (ii) infringement of Article 8(5) of that regulation
20 The General Court rejected those pleas and accordingly dismissed the action in its entirety.
21 On 18 August 2009 the appellant filed an application for an international registration designating the European Union, notification of which was given to EUIPO on 5 November 2009, pursuant to Regulation No 207/2009.
22 The mark in respect of which registration is sought is the word sign ‘KENZO ESTATE’.
23 The goods and services in respect of which registration is ought are in Classes 29, 30, 31, 35, 41 and 43 of the Nice Agreement, and correspond, for each of those classes, to the following description: - Class 29: ‘Olive oil (for food); grape seed oil (for food); edible oils and fats; raisins; processed vegetables and fruits; frozen vegetables; frozen fruits; raw pulses; processed meat products; processed seafood’; - Class 30: ‘Confectionery, bread and buns; wine vinegar; olive dressing; seasonings (other than spices); spices; sandwiches; pizzas; hot dogs (sandwiches); meat pies; ravioli’; - Class 31: ‘Grapes (fresh); olives (fresh); fruits (fresh); vegetables (fresh); seeds and bulbs’; - Class 35: ‘Marketing research on wine; providing information on wine sales; advertising and publicity services; import-export agencies; retail services or wholesale services for foods and beverages; retail services or wholesale services for liquor’; - Class 41: ‘Educational and instruction services relating to general knowledge of wine; educational and instruction services relating to general knowledge of obtaining the sommelier certification; arranging and conducting of examination of wine and simulation test thereof; testing and certifying of sommelier certification; arranging, conducting and organization of seminars on wine; arranging, conducting and organization of seminars on sommelier certification; providing electronic publications on wine; providing electronic publications on sommelier certification; publication of books on wine; publication of books on sommelier certification; providing facilities for educational training on wine; providing facilities for educational training on sommelier certification’, and - Class 43: ‘Providing foods and beverages; providing temporary accommodation’.
24 The application for registration was published in Community Trade Marks Bulletin No 44/2009 of 16 November 2009.
25 On 12 August 2010 Kenzo filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods and services referred to in paragraph 23 above.
26 The opposition was based on the earlier Community word mark KENZO, which was registered on 20 February 2001 under the number 720706 in respect of goods in, inter alia, Classes 3, 18 and 25 of the Nice Agreement, corresponding, for each of those classes, to the description specified in paragraph 14 above.
27 The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation No 207/2009.
28 By decision of 24 May 2012, the Opposition Division rejected the opposition.
29 On 23 July 2012 Kenzo filed a notice of appeal with EUIPO against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
30 By decision of 3 July 2013, the Second Board of Appeal of EUIPO upheld the appeal in part. According to the Board of Appeal, the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 were satisfied in this case in respect of the services covered by the registration applied for. As regards the first condition, the Board of Appeal observed that the marks at issue were highly similar. As regards the second condition, the Board found, contrary to the Opposition Division, that Kenzo had established that the earlier trade mark had a reputation. As regards the third condition, the Board found that it seemed highly likely that, for the services covered by the mark in respect of which registration is sought, for the use of which no due cause had been demonstrated, that mark 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 the earlier mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the image of that mark.
31 By contrast, the Board of Appeal found that the goods in Classes 29 to 31 of the Nice Agreement and covered by the registration applied for were not regarded as luxury goods and that they were not invariably associated with the world of glamour or fashion. The Board took the view that they are common mass-consumed foodstuffs that are bought in any local shop and that they have only a peripheral relation with Kenzo’s goods. The Board found that Kenzo had failed to justify why the registration applied for would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier KENZO mark. The Board of Appeal rejected the opposition for those goods.
32 By application lodged at the Registry of the General Court on 26 September 2013, the appellant brought an action for the annulment of the decision of 3 July 2013. In support of his action, he relied on two pleas in law: (i) infringement of Article 76(2) of Regulation No 207/2009, (ii) infringement of Article 8(5) of that regulation.
33 The General Court rejected those pleas and accordingly dismissed the action in its entirety.
34 By order of the President of the Court of 18 May 2016, Cases C‑85/16 P and C‑86/16 P were joined for the purposes of the written and oral procedure and the judgment.
35 By his appeals, the appellant submits that the Court should: - set aside the judgments under appeal; - give a final ruling on the disputes; - order EUIPO and Kenzo to pay the costs, including the costs incurred in the proceedings before the Board of Appeal.
36 EUIPO and Kenzo contend that the Court should dismiss the appeals and order the appellant to pay the costs.
37 In support of his appeals, the appellant relies on two grounds of appeal, namely the infringement of Article 76(2) and of Article 8(5), respectively, of Regulation No 207/2009.
38 By his first ground of appeal, the appellant submits that the General Court erred in law in finding, in paragraph 23 of each of the judgments under appeal, that the Board of Appeal had rightly found that proof of use and proof of reputation were indissociably linked, in such a way that the former could be adduced as the latter. The appellant submits that the General Court, in so ruling, overlooked the fact that the discretion exercised by the Board of Appeal under Article 76(2) of Regulation No 207/2009 was limited by Rule 20(1) and by Rule 19(1) and (2) of the implementing regulation.
39 According to the appellant, it is clear from those provisions that an opposition based on Article 8(5) of Regulation No 207/2009 must be rejected if the Opponent fails to prove the reputation of the earlier trade mark within the period specified by EUIPO to prove the existence and validity of the earlier right. It is submitted that that interpretation was confirmed by the judgment of 13 June 2002, Chef Revival USA v OHIM - Massagué Marín (Chef) (T‑232/00, EU:T:2002:157, paragraph 44).
40 It is further submitted that it is clear from paragraph 23 of each of the judgments under appeal that, like the Board of Appeal, the General Court wrongly took into consideration the documents lodged after the expiry of the period specified in order to prove the genuine use of the earlier mark, namely Annexes 1 to 21 to Kenzo’s observations, for the purposes of assessing the reputation of that mark. According to the appellant, neither Regulation No 207/2009 nor the implementing regulation provides that the documents produced to prove use, and lodged after the expiry of the period specified for adducing evidence of earlier rights, may serve to prove the reputation of the earlier mark.
41 Kenzo contends, primarily, that the first ground of appeal is inadmissible. In the alternative, it considers that that ground is also unfounded. EUIPO contends that the first ground of appeal is unfounded.
42 As regards the admissibility of the first ground of appeal, it must be borne in mind that, in accordance with Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, appeals lie on points of law only. The General Court consequently has exclusive jurisdiction to find and evaluate the relevant facts and to assess the evidence The appraisal of those facts and evidence does not, therefore, save where they distort the evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 49 and the case-law cited).
43 In that regard, it is sufficient to find that the first ground of appeal raises a point of law, concerning the Board of Appeal’s discretion under Article 76(2) of Regulation No 207/2009, taking into account Rule 20(1) and Rule 19(1) and (2) of the implementing regulation. The first ground of appeal is therefore admissible
44 With regard to the substance of that ground of appeal, it must be remembered that the Court held, in essence, in its judgment of 3 October 2013, Rintisch v OHIM (C‑120/12 P, EU:C:2013:638), that the discretion available to the Board of Appeal under Article 76(2) of Regulation No 207/2009 must be exercised within the confines of the provisions of the third subparagraph of Rule 50(1), and not of Rule 20(1), of the implementing regulation. The Court held, in particular, in paragraph 32 of that judgment, that the implementing regulation expressly provides that, when examining an action brought against a decision of the Opposition Division, the Board of Appeal has discretion - deriving from the third subparagraph of Rule 50(1) of the implementing regulation and from Article 76(2) of Regulation No 207/2009 - to decide whether or not to take into account additional or supplementary facts or evidence which were not submitted within the time limits set or specified by the Opposition Division. Consequently, when dealing with such an action, those provisions give the Board of Appeal the option of admitting or excluding documents, submitted out of time, that relate to the existence, validity and scope of the protection of an earlier mark.
45 In paragraph 38 of that judgment, the Court recalled that, when EUIPO is called upon to give a decision in the context of opposition proceedings, the exercise of its discretion for the purposes of taking into account evidence or facts submitted out of time is subject to the twofold condition that, first, 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 the late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.
46 In the present case, the General Court recalled, in the first place, in paragraphs 16 and 17 of the judgments under appeal, that case-law of the Court and rightly stated, in paragraph 18 of each of those judgments, that it was not appropriate to construe the Board of Appeal’s discretion in the light of Rule 20(1) of the implementing regulation, but solely in the light of the third subparagraph of Rule 50(1) of that regulation.
47 Secondly, the General Court examined, in paragraphs 19 to 23 of the judgments under appeal, whether the Board of Appeal could in the present case take account of that evidence, provided that it was likely to be genuinely relevant and if the stage of the proceedings and certain circumstances of the case allowed it. In paragraph 23 of each of those judgments, the General Court held that that was the case, on the ground that ‘in stating that proof of use and proof of reputation are indissociably linked and that only an excessive and illegitimate formalism would dictate that the proof of use could not be adduced as proof of reputation, 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’.
48 In so ruling, the General Court correctly applied Article 76(2) of Regulation No 207/2009, read in conjunction with the third subparagraph of Rule 50(1) of the implementing regulation. It follows that the first ground of appeal must be rejected as being unfounded.
49 By his second ground of appeal, alleging infringement of Article 8(5) of Regulation No 207/2009, the appellant considers that the General Court erred in law when assessing each of the four conditions laid down in that provision, on the basis of which an application for registration of a mark may be refused. The ground of appeal is therefore divided into four parts, alleging an error of law committed by the General Court in its assessment of the similarity of the conflicting marks, of the reputation of the earlier mark, of the absence of unfair advantage and, lastly, of whether there was due cause for the use of the mark in respect of which registration is sought.
50 By the first part of his second ground of appeal, the appellant submits that the General Court erred in law by finding, in paragraphs 31 to 33 of the judgments under appeal, that the marks at issue were similar while failing, in that regard, to compare those marks, each considered as a whole. He takes the view that the General Court wrongly undertook the requisite comparison with the earlier mark in the light solely of one of the components of the mark in respect of which registration is sought. He claims that, if the General Court had undertaken the necessary comparison of the visual, phonetic and conceptual differences between the marks at issue, it would have concluded that there was no similarity between them. According to the appellant, the ‘Estate’ element occupies significant space in the mark in respect of which registration is sought, as it is composed of six letters and is therefore longer than the ‘Kenzo’ element, composed of five letters. It is also argued that the ‘Estate’ element significantly increases the length of that mark visually and phonetically, and gives rise to significant differences between the conflicting marks, as much in terms of how they sound as of their rhythm.
51 The appellant submits next that the General Court failed to give reasons for its finding that the dominant element of the KENZO ESTATE mark is the ‘kenzo’ element. The appellant takes the view, on the contrary, that the ‘estate’ element has distinctive character so far as concerns the goods and services covered by the mark in respect of which registration is sought. Even if there were a link between that term and those goods and services, it is not so direct as to deprive the ‘estate’ element of any distinctive character and automatically make the ‘kenzo’ element the dominant element.
52 Last, the appellant criticises the General Court for wrongly rejecting the application of the case-law stemming from the judgments of 7 May 2009, Klein Trademark Trust v OHIM - Zafra Marroquineros (CK CREACIONES KENNYA) (T‑185/07, EU:T:2009:147), and of 2 September 2010, Calvin Klein Trademark Trust v OHIM (C‑254/09 P, EU:C:2010:488), in paragraph 34 of each of the judgments under appeal.
53 Kenzo and EUIPO contend that the first part of the second ground of appeal is inadmissible and, in any event, unfounded.
54 With regard to the admissibility of the first part of the second ground of appeal, it must be noted that the argument put forward by the appellant, whereby he maintains that the General Court erred in law by failing to compare the marks at issue, each considered as a whole, and in failing to apply the judgments of 7 May 2009, Klein Trademark Trust v OHIM - Zafra Marroquineros (CK CREACIONES KENNYA) (T‑185/07, EU:T:2009:147), and of 2 September 2010, Calvin Klein Trademark Trust v OHIM (C‑254/09 P, EU:C:2010:488), together with the argument that the General Court failed to give reasons for the finding that the dominant component of the KENZO ESTATE mark is the ‘kenzo’ element, raise points of law. Those arguments are admissible in an appeal, in accordance with the case-law recalled in paragraph 42 of the present judgment.
55 By contrast, the appellant’s argument whereby he maintains that the ‘estate’ element is distinctive is inadmissible since, by that argument, the appellant seeks in reality to challenge the finding of fact made by the General Court in paragraph 33 of each of the judgments under appeal, that the word ‘estate’, in association with the goods and services covered by the applications for registration, lacked distinctive character for a significant part of the relevant consumers.
56 So far as concerns, in the first place, the merits of the argument that the General Court failed to compare the conflicting marks, each considered as a whole, it should be remembered that according to settled case-law, the existence of a link between the earlier mark and the mark in respect of which registration is sought, within the meaning of Article 8(5) of Regulation No 207/2009, must be assessed globally, account being taken of all factors relevant to the circumstances of the case, including in particular the degree of distinctiveness of the earlier mark and the degree of similarity between the marks at issue, which requires the existence, in particular, of elements of visual, aural or conceptual similarity (see judgments of 23 October 2003, Adidas-Salomon and Adidas Benelux, C‑408/01, EU:C:2003:582, paragraph 28, and of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 52 and 64).
57 In the present case, the General Court stated, in paragraphs 31 and 32 of the judgments under appeal, that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar and that, in principle, consumers usually pay more attention to the beginning of a sign than to its end. As regards the lack of distinctiveness of the ‘estate’ element, the General Court noted, in paragraph 33 of each of the judgments under appeal, that ‘[f]or English speakers, that word may denote the place of cultivation and production of wine as“estate” means “a large piece of landed property”’. The General Court accordingly held that the Board of Appeal had rightly found that the relevant consumers would pay less attention to that term and would focus on the first and most distinctive element, namely the term ‘kenzo’.
58 It is clear from paragraphs 31 to 33 of the judgments under appeal that, for the purposes of assessing the similarity between the marks at issue, the General Court held that (i) the mark in respect of which registration is sought consists exclusively of the earlier mark to which the ‘estate’ element has been added, which lacks distinctiveness, and (ii) since, in principle, consumers usually pay more attention to the beginning of a sign than to its end, the relevant consumers would pay less attention to that term and would focus on the first and most distinctive element, namely the term ‘kenzo’.
59 In those circumstances, since the two marks at issue are word marks, one of which consists exclusively of the earlier mark with the addition of an element that lacks distinctiveness, the General Court was fully entitled to conclude that those marks, each considered as a whole, were similar.
60 As regards, in the second place, the appellant’s submission as to a failure to give reasons for the judgments under appeal in respect of the dominant character of the ‘Kenzo’ element, that must be rejected as being unfounded.
61 In paragraph 32 of each of the judgments under appeal, the General Court recalled the case-law according to which, in principle, consumers usually pay more attention to the beginning of a sign than to its end. In paragraph 33 of each of those judgments, the General Court held that the word ‘estate’, in association with the goods covered by the mark in respect of which registration is sought, lacked distinctiveness for a significant part of the relevant consumers. The General Court concluded that ‘the Board of Appeal was right to find that the relevant consumers would pay less attention to that term and would focus on the first and most distinctive element, which is the term “kenzo”’.
62 As regards, in the third place, the appellant’s argument that the General Court wrongly discounted the application of the judgments of 7 May 2009, Klein Trademark Trust v OHIM - Zafra Marroquineros (CK CREACIONES KENNYA) (T‑185/07, EU:T:2009:147), and of 2 September 2010, Calvin Klein Trademark Trust v OHIM (C‑254/09 P, EU:C:2010:488), that argument must also be rejected as being unfounded.
63 As the General Court rightly found in paragraph 34 of each of the judgments under appeal, the facts of the cases giving rise to the judgments cited in the preceding paragraph differ from those of the present cases, since it suffices to find that, in the former cases, the marks at issue were a mark for which registration was sought that consisted of a word sign and earlier marks represented by figurative signs, whereas, in the present cases, the marks at issue are both word marks. Accordingly, the General Court considered that, in the cases giving rise to the judgments cited, the distinctive and dominant elements of the marks at issue were not the same, whereas, in the present case, the General Court held that the term ‘kenzo’, common to the marks at issue, is also their most distinctive element.
64 It follows that the first part of the second ground of appeal must be rejected in its entirety.
65 By the second part of the second ground of appeal, the appellant submits that the General Court erred in law by considering, in paragraph 41 of each of the judgments under appeal, that the Board of Appeal had rightly confirmed that the earlier mark KENZO had a reputation in the European Union for clothing, cosmetics and perfume, when the evidence produced to that end had been submitted out of time and should not have been taken into consideration.
66 Kenzo and EUIPO contend that the second part of that ground of appeal must be rejected as being unfounded.
67 It must be noted that, in paragraph 41 of each of the judgments under appeal, the General Court’s assessment relates to the appellant’s argument that the Board of Appeal should not have taken into account the evidence produced by Kenzo before the Opposition Division prior to 17 May 2010, in Case C‑85/16 P, and prior to 14 February 2011, in Case C‑86/16 P, in order to demonstrate the reputation of the earlier mark, since that evidence was not accompanied by any explanation. The General Court found, in the same paragraph 41, that on the effective date of the international registration of the mark KENZO ESTATE in those two cases, namely 21 January 2008 and 18 August 2009, respectively, the reputation of the earlier mark had been demonstrated, in the light of the evidence submitted in earlier cases on which the Opposition Division relied in the present cases.
68 Consequently, the appellant cannot validly maintain, in the second part of the second ground of appeal, that the General Court erred in law in paragraph 41, by taking into account evidence concerning the reputation of the earlier mark KENZO submitted out of time, since the General Court’s assessment did not relate to the late submission of that evidence.
69 In those circumstances, the second part of the second ground of appeal must be rejected as being ineffective.
70 By the third part of the second ground of appeal, the appellant submits that the General Court erred in law in finding that the use of the mark KENZO ESTATE, in respect of which registration is sought, took unfair advantage of the reputation of the earlier mark, when it did not conduct a global assessment of the marks at issue taking into account all the relevant factors in the present cases, which extend to the nature of the goods or services for which those marks are registered, including the degree of closeness or dissimilarity of those goods or services. He therefore submits that design, colour and scent are relevant elements for the success of clothing, perfumes and cosmetics, namely products covered by the earlier mark, while none of those aspects could constitute an element creating added value for the goods covered by the mark in respect of which registration is sought. Moreover, taking into account the very different nature of the commercial sectors at issue, the appellant argues that it is highly unlikely that the image of exclusivity and luxury attached to clothing, perfumes or cosmetics could be transferred to one of the products covered by the mark in respect of which registration is sought, which covers everyday goods available in supermarkets.
71 The appellant submits in addition that the reasons stated by the General Court are based on mere supposition and speculation and are not supported by any evidence.
72 Kenzo and EUIPO contend that the third part of the second ground of appeal must be rejected as being unfounded.
73 It must be noted that, in so far as, by his argument, the appellant criticises the General Court for failing to take into account the very different nature and aspects of the goods and services covered by the marks at issue, that argument must be rejected as being inadmissible, in accordance with the case-law recalled in paragraph 42 of the present judgment. By that argument, the appellant seeks, in reality, to challenge the finding of fact made by the General Court in that regard in paragraphs 50 to 53 of the judgments under appeal, according to which, in essence, the goods and services covered by the mark in respect of which registration is sought may, like the clothing, perfumes and cosmetics covered by the earlier mark, be part of the luxury sector.
74 In so far as, by his argument, the appellant submits that the General Court failed to carry out a global assessment of all the relevant factors in order to assess the risk of taking an unfair advantage of the reputation of the earlier mark, and that the General Court failed to give adequate reasons for its assessment in that regard, it is clear that the appellant raises a point of law which is admissible in an appeal, in accordance with the case-law recalled in paragraph 42 of the present judgment.
75 However, that argument is based on a misreading of the judgments under appeal.
76 It should be noted that, in paragraphs 45 to 49 of the judgments under appeal, the General Court recalled the relevant case-law in order to determine, in the present case, whether the use of the mark in respect of which registration is sought takes unfair advantage of the reputation of the earlier mark. In paragraphs 50 and 51 of those judgments, it examined the nature and degree of closeness of the goods and services concerned. The General Court confirmed, in paragraph 53 of each of the judgments under appeal, the Board of Appeal’s assessment concerning the existence of a link that could be established between the goods covered by the earlier mark and the goods and services designated by the mark in respect of which registration is sought, namely being part of the luxury sector. In paragraph 54 of each of those judgments, the General Court upheld the Board of Appeal’s assessment that it was highly likely that that mark could take unfair advantage of the reputation of the earlier mark, basing its finding on the existence of a link between the goods and services covered by the marks at issue, the substantial reputation of the earlier mark, the high degree of similarity between those marks and the sophisticated and iconic image conveyed by the earlier mark. In paragraph 56 of the judgment under appeal in Case C‑86/16 P, the General Court added that the services in Classes 35 and 43 of the Nice Agreement, covered by the application for registration, might nonetheless appear to be services ancillary to the production and sale of wine.
77 In those circumstances, the General Court cannot be criticised for failing to undertake a global assessment of all the relevant factors in order to assess whether the mark in respect of which registration is sought would take unfair advantage of the reputation of the earlier mark or for failing adequately to state reasons for that assessment.
78 As a result, the third part of the second ground of appeal must be rejected as being inadmissible in part and unfounded in part.
79 By the fourth part of the second ground of appeal, the appellant submits that the judgments under appeal are vitiated by a failure to state reasons, since the General Court, for the purposes of rejecting the fourth part of the second plea in law brought before it, merely confirmed the Board of Appeal’s finding that ‘no due cause had been demonstrated’.
80 The appellant submits that the Board of Appeal and the General Court also erred in law by failing to take sufficient account of the fact that in the composition of the mark KENZO ESTATE, the ‘kenzo’ element designates the appellant’s forename. He states that he has not sought to take unfair advantage of the reputation of the earlier mark and that he has not acted in bad faith.
81 Kenzo contends that the fourth part of the second ground of appeal is unfounded. EUIPO contends that, inasmuch as the error alleged by the appellant is directed against the decisions of Boards of Appeal, it is, on that basis, inadmissible. In any case, according to EUIPO, that part of the ground of appeal is unfounded.
82 As regards the first argument put forward in support of the fourth part of the second ground of appeal, concerning a failure to state reasons, it should be remembered that, according to settled case-law, the Court of Justice does not require the General Court to provide an account which follows exhaustively and one by one all the arguments put forward by the parties to the case, and that the General Court’s reasoning may therefore be implicit, on condition that it enables the persons concerned to know why it has not upheld their arguments and provides the Court of Justice with sufficient material for it to exercise its power of review (judgment of 11 May 2017, Dyson v Commission, C‑44/16 P, EU:C:2017:357, paragraph 38 and the case-law cited).
83 It is apparent from paragraph 58 of the judgment under appeal in Case C‑85/16 P, and from paragraph 59 of the judgment under appeal in Case C‑86/16 P, that the General Court examined the appellant’s argument that the use of his forename in the mark in respect of which registration is sought constituted due cause, within the meaning of Article 8(5) of Regulation No 207/2009, allowing him to use that sign. The General Court found that while the Board of Appeal’s response to that argument was succinct, it was nevertheless sufficient, since Regulation No 207/2009 does not confer any unconditional right to register a name or a forename as an EU trade mark. The General Court concluded that the fact that Kenzo is the appellant’s forename was not enough to constitute due cause, within the meaning of that provision.
84 It follows that the General Court cannot be criticised for failing to state its reasons for rejecting the appellant’s argument.
85 So far as concerns the second argument put forward in support of the fourth part of the second ground of appeal, that the use of the appellant’s forename in the mark in respect of which registration is sought constitutes due cause, within the meaning of Article 8(5) of Regulation No 207/2009, it should be noted that that argument is inadmissible in so far as it is directed against the decisions of 22 May and 3 July 2013 of the Second Board of Appeal (order of 26 May 2016, Dairek Attoumi v EUIPO, C‑578/15 P, not published, EU:C:2016:377, paragraph 26 and the case-law cited).
86 In so far as that argument is directed against the judgments under appeal, it should be remembered that the Court has already interpreted the concept of ‘due cause’, provided for in Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), as meaning that it may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign which is identical or similar to the mark with a reputation (judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 45).
87 Furthermore, the Court has also stated that since Article 5(2) and Article 4(4)(a) of First Directive 89/104 are worded in essentially identical terms and are designed to give trade marks with a reputation the same protection, the interpretation given for the former provision applied to the latter (see, in particular, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 25, and of 9 January 2003, Davidoff, C‑292/00, EU:C:2003:9, paragraph 17).
88 Since the wording of Article 4(4)(a) of First Directive 89/104 is identical to that of Article 8(5) of Regulation No 207/2009, the Court’s interpretation so far as concerns Article 5(2) of that First Directive may also be transposed to Article 8(5) of Regulation No 207/2009.
89 Accordingly, as is stated by the Advocate General in point 34 of her Opinion, the protection conferred by that Article 8(5) to trade marks with a reputation is extended. The specific condition of that protection consists of a use without due cause of a sign, identical or similar to a registered mark, which would take unfair advantage of, or would be detrimental to, the distinctive character or the reputation of that mark (see, inter alia, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 33 and the case-law cited).
90 Nevertheless, as is clear from Article 8(5) of Regulation No 207/2009, the user of a sign similar to a mark with reputation may rely on ‘due cause’ for the purposes of using that sign, that being an expression of the general objective of that regulation, which is to strike a balance between, on the one hand, the interests of the proprietor of a trade mark in safeguarding the essential function of that mark and, on the other, the interests of a third party in using, in the course of trade, such a sign for the purposes of denoting the goods and services that it markets (see, to that effect, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraphs 41 and 43).
91 In so doing, the claim by a third party that there is due cause for using a sign which is similar to a mark with a reputation cannot lead to the recognition, for the benefit of that third party, of the rights connected with a registered mark, but rather obliges the proprietor of the mark with a reputation to tolerate the use of the similar sign (judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 46).
92 In the present case, in paragraph 54 of each of the judgments under appeal, the General Court upheld the Board of Appeal’s finding that, in essence, it was highly likely that the mark in respect of which registration is sought would take unfair advantage of the earlier mark. In paragraph 58 of the judgment under appeal in Case C‑85/16 P and in paragraph 59 of the judgment under appeal in Case C‑86/16 P, the General Court held that the use of the appellant’s forename, that is, Kenzo, in the composition of the mark KENZO ESTATE was not enough to constitute due cause for the use of that sign, within the meaning of Article 8(5) of Regulation No 207/2009.
93 The General Court did not err in law in finding that the appellant had failed to establish the existence of due cause in his favour for the use of the sign at issue.
94 The mere fact that the term ‘kenzo’ which is a component of the mark KENZO ESTATE corresponds to the appellant’s forename is irrelevant to the issue of whether the use of that term constitutes due cause within the meaning of Article 8(5) of Regulation No 207/2009, since, as stated in essence by the Advocate General in point 38 of her Opinion, the weighing of the different interests involved cannot undermine the essential function of the earlier mark, which is to guarantee the origin of the product.
95 The General Court was therefore fully entitled to consider, in weighing the interests involved, that, taking into account the extended protection granted by Regulation No 207/2009 to trade marks with reputation, the Board of Appeal was entitled to find that no due cause had been demonstrated by the appellant and that, as a result, the latter wanted, by the applications for registration made on 21 January 2008 and 18 August 2009, to take unfair advantage of the reputation of the trade mark KENZO, registered on 20 February 2001.
96 It follows that the second argument put forward in support of the fourth part of the second ground of appeal must be rejected as being unfounded. As a result, the second ground of appeal must also be rejected.
97 It follows from all the foregoing that the appeals must be dismissed in their entirety.
98 In accordance with Article 184(2) of the Rules of Procedure of the Court of Justice, where an appeal is unfounded, the Court is to make a decision as to costs. Under Article 138(1) of those Rules, applicable to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO and Kenzo have applied for costs and Mr Tsujimoto has been unsuccessful, Mr Tsujimoto must be ordered to pay the costs.