Herdade de S. Tiago II v OHMI - Polo/Lauren (V) (Judgment) [2014] EUECJ T-90/13 (18 September 2014)

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(Community trade mark - Opposition proceedings - Application for the Community figurative mark V - Earlier Community, national and Benelux figurative marks representing a polo player - Relative grounds for refusal - Article 8(1)(b) of Regulation (EC) No 207/2009 - Article 8(5) of Regulation No 207/2009)

Herdade de S. Tiago II - Sociedade Agrícola, SA, established in Lisbon (Portugal), represented by I. de Carvalho Simões and J. Pimenta, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and N. Bambara, acting as Agents,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

The Polo/Lauren Company, LP, established in New York, New York (United States), represented by R. Black and S. Davies, Solicitors,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 28 November 2012 (Case R 2240/2011-2), relating to opposition proceedings between The Polo/Lauren Company, LP and Herdade de S. Tiago II - Sociedade Agrícola, SA,

composed of S. Frimodt Nielsen, President, F. Dehousse (Rapporteur) and A.M. Collins, Judges,

having regard to the application lodged at the Court Registry on 12 February 2013,

having regard to the response of OHIM lodged at the Court Registry on 23 May 2013,

having regard to the response of the intervener lodged at the Court Registry on 4 June 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 28 March 2007, the applicant, Herdade de S. Tiago II - Sociedade Agrícola, SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The goods and services in respect of which registration was sought are in Classes 3, 18, 25, 28, 41 and 43 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, 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, dentifrices’;

- Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

- Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes’;

- Class 41: ‘Sporting and cultural activities, nightclubs and discotheques, organisation of exhibitions for cultural, sporting and cultural purposes; sporting and cultural activities, including organisation of sports competitions’;

- Class 43: ‘Providing food and drink, including bars, cafés, cafeterias, canteens, snack bars, restaurants, self-service restaurants; temporary accommodation and hotels, boarding houses, holiday camps, tourist homes and motels’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2007/057 of 8 October 2007.

5 On 7 January 2008, the intervener, The Polo/Lauren Company, LP, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based inter alia on the earlier marks reproduced below (taken together, ‘the earlier marks’).

7 First, the following Community figurative mark, filed on 29 September 2004 and registered on 3 November 2005 under the number 4049201:

8 That mark was registered in respect of goods in Classes 9, 18, 20, 21, 24 and 25 corresponding, for each of those classes, to the following description:

- Class 9: ‘Binoculars, eyeglass cases, pince-nez, pince-nez cases, pince-nez chains, pince-nez cords, eyeglass chains, eyeglass frames, eyeglass cords, eyeglasses, spectacle cases, spectacle frames, spectacle glasses, sunglass cords, sunglass frames, sunglass chains, and sunglasses’;

- Class 18: ‘Leather and imitations of leather, handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (earthenware) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrellas, umbrella covers, and wallets; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

- Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, baskets, bottle, jar and magazine racks; coat hangers and coat stands; clothing covers (wardrobes); cushions and pillows; wall plaques, jewellery cases, statuettes and wickerwork, armchairs, bassinets, beds, bedding, bedsteads of wood, benches, battle racks, chairs, chest of drawers, chests, coat stands, crates, deck chairs, desks, dinner wagons, divans, dressing tables, easy chairs, fans for personal use, foot stools, frames, furniture, hampers, hat stands, magazine racks, mannequins, mattresses (spring), mirrors, mirror tiles, newspaper display stands, pedestals, picture frames, pillows, plaques, rattan, settees, showcases, sideboards, sleeping bags for camping, sofas, statues of wood, wax, plaster or plastic, statuettes of wood, wax, plaster or plastic, stools, tables, tea carts, tea trolleys, trays, umbrella stands, wickerwork, wind chimes, works of art, of wood, plaster or plastic’;

- Class 21: ‘Household or kitchen utensils and containers, non-electric (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes); brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), tableware of glass, porcelain and earthenware, drinking vessels of glass and of plastic, mugs of ceramics, bowls, containers for food and drinks, trays not of precious metal, signboards of porcelain or glass; non-electric household or kitchen utensils and containers, spatulas, strainers, basting spoons for kitchen use, basins, thermal insulated containers for beverages, blenders, bottle openers, soap boxes, domestic bread baskets, perfume burners, butter dishes, cake molds, cheese-dishes and cheese-dish covers, cooking pots, decanters, deep fryers; soap dispensers; boxes for dispensing paper towels, egg cups; fruit cups; fruit pressers, garbage cans, ice cube molds, kettles, kitchen mixers, lunch boxes, manual mixers for cocktails, mixing spoons, napkin rings not of precious metal, frying pans, salt and cocktail shakers, stew pans, sugar bowls, tea infusers not of precious metals, toothpicks; combs and sponges, hair combs, sponges for household purposes; brushes, cosmetic brushes, nail brushes; brush making materials, steel wool for cleaning; beverage glassware, household non-electric whisks, ceramics, glassware, porcelain, earthenware, perfume sprayers and vaporizers and vases, beer mugs, bottle openers, bread bins, bread boards, footwear brushes, butter dishes, candelabra, candle extinguishers, candle rings, candlesticks, cocktail stirrers, coffee services, coffeepots, comb cases, combs, cookie jars, cooking pots, cooking utensils, corkscrews, crockery, cups, decanters, dishes, drinking flasks, drinking glasses, egg cups, figurines, fruit cups, glass bowls, glassware, goblets, ice buckets, jugs, kettles, liqueur sets, pans, pepper mills, perfume sprayers, perfume vaporizers, pitchers, porcelain ware, pots, poultry rings, salad bowls, salt cellars, salt shakers, saucepans, shaving brushes, soap boxes, soap holders, soup bowls, statues of porcelain, terra-cotta or glass, statuettes of porcelain, terra-cotta or glass, sugar bowls, table plates, tableware, tankard, teapots, toilet brushes, toilet cases, toilet utensils, toothbrushes, toothpicks, trays, urns, utensils for household purposes, vases’;

- Class 24: ‘Fabrics for textile use; bed and table covers, blankets, bath linen, household linen, curtains, bed linen, duvets, travelling rugs, textile piece goods for making up into the aforesaid goods bed blankets, bed cloths, bed covers, bedspreads, blankets, coasters, eider downs, face towels, furniture coverings, flags, handkerchiefs, linen, mattress covers, pillow shams, pillowcases, place mats, (textile), quilts, serviettes (textile), table cloths, table linen, table napkins, table mats, table runners, towels, travelling rugs, upholstery (fabrics), and wall hangings’;

- Class 25: ‘Clothing, underclothing; shoes and footwear; headgear; clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, shirts, wraps, jerseys, t-shirts, shirts, sweaters, waistcoats, blouses, dresses, jumpers, sleepwear, robes, warm-up suits, sweatshirts, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear; footwear for men, women, children, and infants’ shoes, sneakers, sandals, slippers, boots; headgear for men, women, children, and infants’ hats, headbands, earmuffs, caps, sweaters, shirts, including knitshirts, dress shirts, sports shirts, sweatshirts and T-shirts; jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, tops, vests, hosiery, scarves, pajamas, underwear, kilts, mufflers, shawls; footwear, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear’.

9 Second, the following national figurative mark, filed on 18 November 1981 and registered in the United Kingdom on 14 July 1989 under the number 1164945:

10 That mark was registered for goods in Class 25 corresponding to the following description: ‘Slacks, jackets, blouses, jeans and footwear, all being articles of clothing; but not including any such goods adapted for use in horse riding’.

11 Third, the following Benelux figurative mark, filed on 7 July 1992 and registered on 1 April 1993 under the number 520117:

12 That mark was registered for goods in Class 28 corresponding to the following description: ‘Games, playthings, gymnastics and sporting articles not included in other classes; decorations for Christmas trees’.

13 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).

14 On 29 August 2011, the Opposition Division partially upheld the opposition brought by the intervener. It rejected, on the basis of Article 8(1)(b) of Regulation No 207/2009, the Community trade mark application in respect of the ‘games and playthings’ in Class 28 and all of the goods in Classes 18 and 25, with the exception of ‘whips, harness and saddlery’ in Class 18. It also rejected, on the basis of Article 8(5) of Regulation No 207/2009, the Community trade mark application in respect of the ‘soaps, perfumery, essential oils, cosmetics and hair lotions’ in Class 3, the ‘gymnastic and sporting articles not included in other classes’ in Class 28 and the ‘sporting activities, organisation of exhibitions for sporting purposes; sporting activities, including organisation of sports competitions’ in Class 41. By contrast, the opposition was rejected in respect of the other goods and services.

15 On 28 October 2011, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

16 By decision of 28 November 2012 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It found, in essence, that the Opposition Division had not erred in finding that there was a likelihood of confusion between the signs at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009, in respect of the goods referred to in paragraph 14 above, in the light of, inter alia, the identity of the goods concerned and the similarities between the signs at issue and the enhanced distinctive character acquired through use of the earlier marks in respect of certain goods in Classes 18 and 25. It also took the view, in essence, that the Board of Appeal had not erred in finding, in respect of the goods and services referred to in paragraph 14 above, that the use of the mark applied for would be detrimental to the repute of the earlier mark, within the meaning of Article 8(5) of Regulation No 207/2009.

19 The applicant puts forward, in essence, two pleas in law in support of its action. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea alleges infringement of Article 8(5) of Regulation No 207/2009.

The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

20 The applicant submits, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue. In particular, the applicant calls into question the Board of Appeal’s finding that the evidence provided by the intervener showed that the earlier marks had distinctive character acquired through use or a reputation. Furthermore, the differences between the signs at issue rule out any likelihood of confusion in the present case. Lastly, the applicant invokes a number of decisions both of national authorities and of OHIM which lend support to its position. It also refers to the fact that the marks at issue have coexisted peacefully in Portugal since at least 2005.

22 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

23 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited). Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 48, and Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 25).

24 Furthermore, the global assessment of the likelihood of confusion, as far as the visual, phonetic or conceptual similarity of the signs in question is concerned, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 8 December 2011 in Case T-586/10 Aktieselskabet af 21. november 2001 v OHIM - Parfums Givenchy (only givenchy), not published in the ECR, paragraph 20 and the case-law cited).

25 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well-informed, and reasonably observant and circumspect. In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must rely on his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case T-104/01 Oberhauser v OHIM - Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 28, and Case T-186/02 BMI Bertollo v OHIM - Diesel (DIESELIT) [2004] ECR II-1887, paragraph 38).

26 In addition, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether a likelihood of confusion exists (see judgment of 17 April 2008 in Case C-108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraphs 32 and 33 and the case-law cited, and judgment of 28 October 2010 in Case T-131/09 Farmeco v OHIM - Allergan (BOTUMAX), not published in the ECR, paragraph 67).

27 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.

28 In the present case, the earlier marks are, first, a Community trade mark and, second, national trade marks registered in the United Kingdom and in Benelux. Consequently, as the Board of Appeal found in paragraphs 27 and 30 of the contested decision, findings which the applicant does not dispute, the relevant territory as regards the earlier Community trade mark is that of the European Union and the relevant territory as regards the other earlier national marks is that of the United Kingdom and Benelux.

29 It is also common case that the target public, as, in essence, the Board of Appeal correctly pointed out in paragraphs 33 to 37 of the contested decision, consists of average, reasonably well-informed and reasonably observant and circumspect consumers of the goods concerned.

30 In the first place, as regards the similarity of the goods concerned, it must be held that, as the Board of Appeal correctly stated in paragraph 38 of the contested decision, without, moreover, being contradicted on this point by the applicant, the goods in Classes 18 and 25 covered by the mark applied for and by the earlier Community trade mark and the goods in Class 28 covered by the mark applied for and by the earlier Benelux mark are identical.

31 In the second place, as regards the similarity of the signs at issue, it must be borne in mind that assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).

32 In that context, it is necessary at the outset to reject the applicant’s arguments that the comparison of the signs at issue ought to be carried out without taking into consideration the figurative element representing a polo player. First, that figurative element is the only element of which the earlier marks consist. Second, as regards the mark applied for, it must be observed, as was stated by the Board of Appeal, that the figurative element representing a polo player will still have an independent distinctive role in the mark applied for. In addition, it is apparent from the position and the size of the figurative element at issue that it cannot be regarded as negligible in the overall impression created by that mark.

33 Furthermore, it is necessary to uphold the Board of Appeal’s finding that the letter ‘v’, which is in normal typeface, has a rather weak inherent distinctive character (paragraph 51 of the contested decision). It is likewise necessary to uphold the Board of Appeal’s finding that the figurative representation of a polo player is not inherently particularly distinctive in relation to ‘clothing, footwear, headgear’ in Class 25 and ‘gymnastic and sporting articles not included in other classes’ in Class 28. In addition, the Opposition Division’s finding that the figurative representation of a polo player is not inherently particularly distinctive in respect of ‘whips, harness and saddlery’ in Class 18 was not challenged before the Board of Appeal. By contrast, the figurative element representing a polo player has at least normal distinctiveness in relation to the other goods in Classes 18 and 28, as the Board of Appeal pointed out in paragraph 50 of the contested decision. In view of those considerations and of the fact, pointed out by the Board of Appeal, that the letter ‘v’ is depicted in the background and is partially covered by the figurative element representing a polo player, the Board of Appeal did not err in finding, in paragraph 53 of the contested decision, that more weight could be attributed to that figurative element in the mark applied for with regard to the goods for which that sign has at least normal inherent distinctiveness.

34 First, at the visual level, it must be pointed out that the signs at issue have the figurative representation of a polo player in common, as was correctly stated by the Board of Appeal. In particular, in all of them, the horse seems to be in motion and the polo player is holding a mallet in his hand. It is, admittedly, true that those figurative representations contain differences, which have, moreover, been pointed out by the applicant. However, those differences do not make it possible to come to the conclusion, as the applicant maintains in its written pleadings, that there is no similarity between the figurative elements in the signs at issue. In particular, it must be stated, as the Board of Appeal pointed out, that, in all the cases, the relevant consumer will distinctly identify, and remember, a polo player (see, to that effect, judgment of 18 May 2011 in Case T-376/09 Glenton España v OHIM - Polo/Lauren (POLO SANTA MARIA), not published in the ECR, paragraph 33).

35 Furthermore, although the letter ‘v’, which is used in the mark applied for, also plays a non-negligible role in that mark, in view of its position and size, it is not, however, the dominant element. In addition, since the letter ‘v’ is placed in the background of the mark applied for, it has the effect of highlighting the figurative representation of the polo player, as the Board of Appeal, correctly pointed out, in essence, in paragraph 52 of the contested decision.

36 In view of all of those considerations, the Board of Appeal did not err in finding, in paragraph 60 of the contested decision, that the signs at issue were visually similar to a medium degree.

37 Second, at the phonetic level, the Board of Appeal was also right in finding, in essence, that the signs at issue were not similar, either because the mark applied for will be pronounced by reference to the letter ‘v’ or because a phonetic comparison is impossible (paragraphs 61 to 63 of the contested decision). The applicant does not fundamentally dispute the Board of Appeal’s assessment in that regard and maintains that the mark applied for will be referred to as ‘v’, unlike the earlier marks.

38 Third, at the conceptual level, it is necessary to uphold the Board of Appeal’s finding, referring to the Opposition Division’s reasoning, that, given that they have a figurative element representing a polo player in common, the signs at issue refer to the sport of polo. The addition of the letter ‘v’ in the mark applied for does not alter that finding since, as the Board of Appeal validly pointed out, that element has no specific conceptual meaning for the relevant public in the present case. The Board of Appeal did not therefore err in finding that the signs at issue are conceptually identical. The applicant does not directly challenge that finding, even though on the whole it takes the view that the figurative element in question should not be taken into account in the comparison of the signs at issue, an argument that must be rejected on the grounds set out in paragraph 32 above.

39 In the third place, as regards the global assessment of the likelihood of confusion, it must be borne in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion (see paragraph 26 above). On that point, the Board of Appeal stated that the figurative element representing a polo player, of which the earlier marks consist, has a weak inherent distinctive character in relation to ‘clothing, footwear, headgear’ in Class 25 and ‘gymnastic and sporting articles not included in other classes’ in Class 28 (paragraph 68 of the contested decision). Furthermore, it found that the earlier marks had enhanced distinctiveness or a reputation on account of the public’s recognition of them in relation to a number of goods in Class 18, namely ‘handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (earthenware) attaché cases, backpacks, beach bags, briefcases, card cases, key cases, leather shoulder belts net bags, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases and wallets’ and in relation to all the goods in Class 25 (paragraphs 69 to 80 and 86 of the contested decision).

40 The applicant specifically disputes the Board of Appeal’s finding relating to the enhanced distinctiveness or reputation of the earlier marks as a result of the public’s recognition of them. In particular, the applicant states that the decisive element is to establish whether the marks in question had acquired a distinctive character through use or a reputation as at the filing date of the mark applied for (28 March 2007). According to the applicant, the vast majority of the evidence submitted in that regard refers to a period considerably earlier than the filing date of the mark applied for. It submits that no evidence was provided regarding 2007.

41 In that regard, it must first of all be stated that the applicant does not dispute the evidential value of the evidence that the applicant put forward to show that the earlier marks had enhanced distinctiveness through use or a reputation. The applicant disputes solely the period to which that evidence relates. Second, none of the parties disputes that the earlier marks ought to have acquired enhanced distinctiveness through use or a reputation as at the filing date of the mark applied for, namely 28 March 2007.

42 In that respect, it must be stated that a large part of the evidence put forward actually relates, as was, moreover, pointed out by the Board of Appeal itself, to the period from 1991 to 2004. However, as the Board of Appeal also correctly stated, in essence, in paragraph 76 of the contested decision, such long use of the earlier marks constitutes an indication that the enhanced distinctiveness through use or the reputation continued beyond 2004. Furthermore, it must be borne in mind that the intervener also provided evidence in respect of the period after 2004. As the Board of Appeal pointed out in paragraph 78 of the contested decision and as the applicant admits in its written pleadings, Annexes 3 and 10 to the letter sent by the intervener to OHIM on 5 August 2010 contained documents relating to 2005 and 2006. In addition, the applicant itself states in its written pleadings that Annex 8 to that letter contained documents relating to 2006. Consequently, even if the Board of Appeal erred as regards the year to which the documents set out in Annexes 9 and 11 to the abovementioned letter related, as the applicant maintains, that cannot call into question the fact that the intervener provided documents relating to 2005 and 2006. Lastly, as regards the applicant’s argument that no evidence was provided for 2007, it must be pointed out that the mark applied for was filed on 28 March 2007, that is to say at the beginning of that year. The intervener cannot therefore be criticised for having provided documents that cover only the year immediately prior to the beginning of 2007. Furthermore, it cannot be claimed that the distinctiveness acquired through use or the reputation of the earlier marks, with regard to which documents up until 2006 have been provided, could have disappeared as at 28 March 2007, as OHIM correctly points out in its written pleadings. In view of all of those considerations, and in the absence of more detailed arguments, it must be held that the Board of Appeal did not err in finding that the earlier marks had enhanced distinctiveness through use or a reputation.

43 As regards the global assessment of the likelihood of confusion, it must be borne in mind that, as has just been established, the signs at issue are visually similar and have, above all, been found to be conceptually identical. In addition, the goods in Classes 18 and 25 covered by the mark applied for and by the earlier Community trade mark and the goods in Class 28 covered by the mark applied for and by the earlier Benelux mark are identical. Furthermore, it is necessary to take into account the greater or lesser degree of inherent distinctiveness of the figurative element representing a polo player in relation to the goods concerned (see paragraph 33 above). Lastly, the applicant has not put forward any argument that makes it possible to take the view that the Board of Appeal erred as regards the enhanced distinctiveness acquired through use of the earlier marks for a number of the goods in Class 18 and for all the goods in Class 25. In particular, it must be pointed out that, although the figurative element of which the earlier marks consist is not inherently particularly distinctive in relation to ‘clothing, footwear, headgear’ in Class 25, the earlier marks have acquired enhanced distinctiveness through use in respect of those goods. By contrast, that is not true of the ‘whips, harness and saddlery’ in Class 18. In the light of a global assessment of all of those factors, it is necessary to uphold the Board of Appeal’s finding that there is a likelihood of confusion between the signs at issue in respect of ‘games and playthings’ in Class 28 and in respect of all the goods in Classes 18 and 25, with the exception of ‘whips, harness and saddlery’ in Class 18.

44 The other arguments put forward by the applicant are not capable of casting doubt on that finding.

45 As regards the coexistence of the marks at issue in Portuguese territory and the fact that the mark applied for is a mark that is known to people who play the sport of polo, inter alia in Portugal, it must be borne in mind that it is true that the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could eliminate a likelihood of confusion between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning the examination of the relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (Case T-31/03 Grupo Sada v OHIM - Sadia (GRUPO SADA) [2005] ECR II-1667, paragraph 86, and Case T-460/07 Nokia v OHIM - Medion (LIFE BLOG) [2010] ECR II-89, paragraph 68).

46 In the present case, as the Board of Appeal correctly found in paragraph 31 of the contested decision, it is sufficient to state that the coexistence in Portugal relied on, even if it were established, applies to only a part of the relevant public, as regards the earlier Community trade mark, and has no effect as regards the relevant public for the earlier marks registered in the United Kingdom and Benelux. The documents put before the Court concerning the participation of the polo club of which the applicant is the owner in certain sporting events outside of Portugal do not show that the marks at issue coexisted peacefully on those markets or that that coexistence is based on the absence of any likelihood of confusion on the part of the relevant public between those marks, and there is no need to rule on the admissibility of some of those documents.

47 As regards the decisions of national authorities, which are relied on by the applicant, it must be borne in mind that the Community trade mark system is autonomous and that, accordingly, OHIM is not bound by national registrations (see, to that effect, Case T-281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II-1915, paragraph 35, and judgment of 12 December 2007 in Case T-117/06 DeTeMedien v OHIM (suchen.de), not published in the ECR, paragraph 45 and the case-law cited). Consequently, the applicant’s arguments are not capable of casting doubt on the Board of Appeal’s finding and there is no need to rule on the admissibility of certain items of evidence which were submitted for the first time before the Court.

48 As regards, lastly, OHIM’s previous decision-making practice, which the applicant also relies on, it must be pointed out that decisions concerning the registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. The lawfulness of decisions of the Boards of Appeal must therefore be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards (Case C-412/05 P Alcon v OHIM [2007] ECR I-3569, paragraph 65, and judgment of 2 May 2012 in Case T-435/11 Universal Display v OHIM (UniversalPHOLED), not published in the ECR, paragraph 37). Moreover, if by its arguments the applicant is in fact relying on a breach of the principle of equal treatment, it must be recalled that compliance with that principle must be consistent with compliance with the principle of legality (Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-1541, paragraph 75). For reasons of legal certainty and sound administration, every application for registration must be the subject of a stringent and full examination, which must be undertaken in each individual case (Agencja Wydawnicza Technopol v OHIM, paragraph 77). On the foregoing grounds, the Board of Appeal did not err in finding that the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 had, in the present case, been satisfied. It follows that the applicant cannot reasonably rely, for the purposes of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on OHIM’s previous decisions (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraphs 78 and 79, and UniversalPHOLED, paragraph 39). Furthermore, it must be pointed out that the decisions of OHIM relied on by the applicant related to signs that are different from those at issue in the present case.

49 In view of all of those considerations, the first plea put forward by the applicant must be rejected as unfounded.

The second plea, alleging infringement of Article 8(5) of Regulation No 207/2009

50 The applicant claims, in essence, that the Board of Appeal erred in finding that the earlier marks have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. The applicant states, in that regard, that the vast majority of the evidence that the intervener put forward before OHIM refers to a period considerably earlier than the filing date of the mark applied for. Consequently, the mark applied for should not have been refused registration in respect of the ‘soaps, perfumery, essential oils, cosmetics and hair lotions’ in Class 3. Furthermore, according to the applicant, the services ‘sporting activities, organisation of exhibitions for sporting purposes; sporting activities, including organisation of sports competitions’ in Class 41 are not related, directly or indirectly, to the goods covered by the earlier marks. The applicant submits that, in any event, the conditions for concluding that there is a likelihood of confusion are not satisfied in the present case.

52 Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for must 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 Community trade mark, the trade mark has a reputation in the Community 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.

53 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the Community, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case T-215/03 Sigla v OHIM - Elleni Holding (VIPS) [2007] ECR II-711, paragraphs 34 and 35, and Case T-150/04 Mülhens v OHIM - Minoronzoni (TOSCA BLU) [2007] ECR II-2353, paragraphs 54 to 56).

54 In the present case, it must, first of all, be pointed out that the applicant disputes, in essence, the Board of Appeal’s finding that the earlier marks have a reputation. On the grounds set out in paragraphs 41 and 42 above, the Board of Appeal did not err in that regard. Consequently, the argument put forward by the applicant must be rejected.

55 Second, the applicant has not put forward any specific argument concerning the Board of Appeal’s finding that the opposition had to be upheld, on the basis of Article 8(5) of Regulation No 207/2009, against the ‘gymnastic and sporting articles not included in other classes’ in Class 28.

56 As regards the applicant’s argument that the services ‘sporting activities, organisation of exhibitions for sporting purposes; sporting activities, including organisation of sports competitions’ in Class 41 are not related, directly or indirectly, to the goods covered by the earlier marks, it must be borne in mind that the degree of closeness or dissimilarity between the goods or services covered by the marks at issue is a relevant criterion in assessing, within the context of Article 8(5) of Regulation No 207/2009, whether the degree of similarity between those marks will cause the relevant public to establish a link between them (see, to that effect, Case T-59/08 Nute Partecipazioni and La Perla v OHIM - Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC) [2010] ECR II-5595, paragraph 42; see also, by analogy, Case C-252/07 Intel Corporation [2008] ECR I-8823, paragraph 42). It is sufficient to state that, in the present case, there is a certain degree of closeness between the goods and services at issue inasmuch as ‘clothing, footwear, headgear’ include goods relating to sport. Those goods may therefore be used be in the ‘sporting activities, organisation of exhibitions for sporting purposes; sporting activities, including organisation of sports competitions’ covered by the mark applied for. Consequently, the argument put forward by the applicant is not capable of calling the Board of Appeal’s finding into question.

57 Lastly, as regards the applicant’s argument that the conditions for concluding that there is a likelihood of confusion are not, in the present case, satisfied, it is sufficient to bear in mind that the fourth of the conditions for the application of Article 8(5) of Regulation No 207/2009 does not require there to be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them, without having necessarily to confuse them (see, VIPS, paragraph 53 above, paragraphs 36 to 42 and the case-law cited).

58 In view of those considerations, and in the absence of more detailed arguments, the second plea put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.

59 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

2. Orders Herdade de S. Tiago II - Sociedade Agrícola, SA to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Herdade de S. Tiago II v OHMI - Polo/Lauren (V) (Judgment) [2014] EUECJ T-90/13 (18 September 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T9013.html Cite as: EU:T:2014:778, [2014] EUECJ T-90/13, ECLI:EU:T:2014:778

Court of Justice of the European Communities (including Court of First Instance Decisions)