Louis Vuitton Malletier v EUIPO - Bee-Fee Group (LV POWER ENERGY DRINK) (EU trade mark - Judgment) [2018] EUECJ T-372/17 (29 November 2018)

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(EU trade mark — Invalidity proceedings — EU figurative mark LV POWER ENERGY DRINK — Earlier EU figurative mark LV — Relative ground for refusal — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) — Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) — Earlier decisions of EUIPO recognising the reputation of the earlier trade mark)

Louis Vuitton Malletier, established in Paris (France), represented by P.L. Roncaglia, G. Lazzeretti, F. Rossi and N. Parrotta, lawyers,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

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

Bee-Fee Group Ltd, established in Nicosia (Cyprus), represented by L. Karpierz, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 March 2017 (Case R 906/2016-4), relating to invalidity proceedings between Louis Vuitton Malletier and Bee-Fee Group,

composed of G. Berardis, President, S. Papasavvas and O. Spineanu-Matei (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 22 August 2017,

having regard to the response of the intervener lodged at the Court Registry on 1 September 2017,

1 On 22 May 2014, the intervener, Bee-Fee Group Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services in respect of which registration was sought are in Classes 32, 35 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 32: ‘Energy drinks; Sherbets [beverages]; Fruit drinks; Waters [beverages]; Non-alcoholic beverages; ...; Isotonic drinks; Part frozen slush drinks; Beverages containing vitamins; Sports drinks; Mineral water [beverages]; Carbonated non-alcoholic drinks; Fruit juice beverages (Non-alcoholic -); ...; Energy drinks containing caffeine; Fruit beverages and fruit juices; Smoothies; Isotonic beverages [not for medical purposes]’;

– Class 43: ‘Bar services; Services for providing food and drink; Catering services for the provision of food; Catering; ...; Fast food restaurant services; Snack-bars; Restaurant services; Self-service restaurants; Cafeterias; Canteens’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 129/2014 on 15 July 2014. On 22 October 2014, the contested mark was registered under number 12898219.

5 On 13 March 2015, the applicant, Louis Vuitton Malletier, filed an application with EUIPO seeking that the contested trade mark be declared invalid for all the goods and services referred to in paragraph 3 above.

6 The application for a declaration of invalidity was based on the EU figurative mark, registered on 11 November 1997 and renewed until 1 April 2026, under number 15628, as reproduced below:

7 That trade mark was registered in respect of, inter alia, goods in Classes 18 and 25 and corresponding, for each of those classes, to the following description:

– Class 18: ‘Goods made of leather or of imitations of leather not included in other classes in particular boxes of leather or of leatherboard, envelopes of leather or of imitation of leather; trunks, valises, travelling bags, travelling sets, garment bags for travel, vanity-cases, chests, bags, rucksacks, handbags, beach bags, shopping bags, shoulder bags, suitcases, attaché-cases, briefcases, satchels, pouches, fine leather goods in particular pocket wallets, coin purses not of precious metal, purses, key-holders, card holders; umbrellas, parasols, sunshades, canes, walking-stick seats’;

– Class 25: ‘Clothing, underwear and other clothing articles, in particular sweaters, shirts, dress bodies, corsets, suits, waistcoats, waterproofs clothing, skirts, coats, pullovers, trousers, dresses, clothing jackets, shawls, stoles, sashes for wear, scarves, neck ties, ties, pocket handkerchiefs for wear, braces, clothing gloves, clothing belts, stocking[s], tights, socks, bathing suits, bath robes; footwear; headgear for wear’.

8 The grounds relied upon in support of the application for a declaration of invalidity were those referred to in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and 8(5) of Regulation 2017/1001). The application for a declaration of invalidity was based on the goods in Classes 18 and 25 referred to in paragraph 7 above, and a reputation of the earlier trade mark within the European Union was claimed in relation to those goods.

9 On 29 April 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. In the first place, as regards the ground of invalidity referred to in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, it found, in essence, that the goods and services in question were dissimilar, which was sufficient to rule out a likelihood of confusion. In the second place, concerning the ground of invalidity referred to in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation, it found that, as a whole, the marks were similar only to a low degree. What is more, it found that, although it had been demonstrated that the earlier mark had a reputation in the relevant territory in relation to goods in Classes 18 and 25, there was no relevant link between the marks at issue. According to the Cancellation Division, the goods and services concerned were very dissimilar, and the degree of similarity between the marks at issue was low. It considered that no positive or negative image transfer in either direction had been demonstrated and rejected the application for a declaration for invalidity on that ground.

10 On 13 May 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

11 By decision of 29 March 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal. In the first place, as regards the ground of invalidity referred to in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, it found, in essence, that the goods and services in question were dissimilar, which was sufficient to rule out a likelihood of confusion. In the second place, concerning the ground of invalidity referred to in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation, it found that, as a whole, the marks were dissimilar and rejected the application for a declaration of invalidity on that ground. It stated, however, for the sake of completeness, that, even if there were a certain degree of similarity between the marks at issue, which would be very low at the most, in particular assuming that the earlier mark would be perceived as the combination of letters ‘lv’, the application for a declaration of invalidity had to be rejected. According to the Board of Appeal, the applicant had not shown that that mark was known by a significant part of the public concerned — that is, the general public — in respect of the goods that it covered. It stated that, even if the claimed reputation of the mark were established, any use of the contested mark by the intervener in connection with the goods and services covered by that mark would not take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark in respect of, in essence, bags and fashion wear.

14 At the hearing, in response to a question from the Court, the applicant withdrew the part of its first head of claim relating to the application for a declaration of invalidity of the contested mark, formal note of which was made in the minutes of the hearing.

15 In support of its action, the applicant raises two pleas alleging, first, infringement of Article 8(5) of Regulation No 207/2009 and, secondly, breach of the general principle of legal certainty and infringement of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001).

17 As a preliminary point, it must be noted that, at the hearing, in response to a question from the Court, the parties stated that they did not dispute the fact that the version of Article 8(5) of Regulation No 207/2009 applicable in the present case was that in force prior to the version resulting from the entry into force of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), formal note of which was made in the minutes of the hearing.

18 It should be borne in mind that Article 53(1)(a) of Regulation No 207/2009 provides that ‘[an EU] trade mark shall be declared invalid on application to [EUIPO] ... where there is an earlier trade mark as referred to in Article 8(2) [of that regulation] and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled’.

19 Article 8(5) of Regulation No 207/2009, in the version applicable to the present case, provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) (now Article 8(2) of Regulation 2017/1001), 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 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.

20 According to case-law, the required degree of knowledge of the earlier mark must be considered to be reached when that mark is known by a significant part of the public concerned by the goods or services covered by that trade mark (see, to that effect and by analogy, judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 26).

21 In order better to identify the risk referred to in Article 8(5) of Regulation No 207/2009, it must be pointed out that, while the primary function of a mark is unquestionably that of an ‘indication of origin’ (recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001)), the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as, for example, luxury, lifestyle, exclusivity, adventure, youth. To that effect, the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed by, inter alia, a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).

22 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. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, 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 (see, to that effect, judgments of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34, and of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).

23 The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of the unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).

Second plea in law, alleging breach of the principle of legal certainty and infringement of Article 75 of Regulation No 207/2009

24 The applicant submits that the Board of Appeal breached the principle of legal certainty and failed to fulfil its obligation to state reasons referred to in Article 75 of Regulation No 207/2009 by ignoring all the previous decisions which the applicant had submitted, notwithstanding their relevance to, inter alia, the assessment of the public’s perception of the earlier trade mark and of its reputation within the European Union, and by failing to explain the reasons why the previous decisions, the majority of which did specifically address the logo identical to the earlier trade mark, were not relevant in the present case. In that regard, the applicant claims, in essence, that, even if, as a general rule, earlier decisions are not legally binding, the Board of Appeal could not simply mention, in paragraph 35 of the contested decision, the principle that it was bound neither by EUIPO’s previous decision-making practice nor by earlier national decisions. EUIPO must, according to the applicant, safeguard the legal certainty of the EU trade mark system.

25 The applicant claims that the reputation of the earlier mark has been recognised in decisions of judicial and administrative bodies throughout the European Union. In the majority of those decisions, based on virtually identical documents to those submitted in the present case, the high probative value of the applicant’s documents was expressly emphasised. In addition, in the present case, the Cancellation Division indicated that ‘the notable amount of evidence submitted by the applicant reveals beyond any doubt that the earlier sign is generally well known in the relevant market’.

26 EUIPO does not accept that Article 75 of Regulation No 207/2009 was infringed. The Board of Appeal, according to EUIPO, set out in sufficient detail the reasons why the earlier decisions referred to by the applicant were irrelevant (paragraphs 35 to 37 of the contested decision) and the reasons why it held that, in the present case, the evidence submitted by the applicant was not sufficient to prove a separate, stand-alone reputation of the earlier trade mark (paragraphs 33 to 37 of the contested decision).

27 The intervener challenges the applicant’s arguments relating to infringement of Article 75 of Regulation No 207/2009. The contested decision, it submits, sets out all the reasons on which it is based. The Board of Appeal took due account of the claims, evidence and statements submitted by the parties at an earlier stage of the procedure. The applicant’s arguments refer, in fact, to the Board of Appeal’s right to ‘arbitrarily’ evaluate the evidence submitted.

28 It is settled case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principle of equal treatment and the principle of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73, and order of 11 April 2013, Asa v OHIM, C‑354/12 P, not published, EU:C:2013:238, paragraph 41).

29 The Court of Justice has held that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way. However, it has added that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74, 75 and 77; of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, not published, EU:C:2014:2089, paragraph 45, and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37). Those principles are applicable mutatis mutandis to invalidity proceedings.

30 The Court of Justice has also held that the right to sound administration includes, inter alia, an obligation on the administration to state reasons for its decisions, pursuant to Article 41(2) of the Charter of Fundamental Rights of the European Union. That obligation, which also flows from Article 75 of Regulation No 207/2009, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to enable them to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision concerned (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 111, and of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 29).

31 Moreover, that obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning of the institution which adopted the measure in question, without it being necessary that the reasoning go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 32).

32 It is in the light of the considerations set out in paragraphs 28 to 31 above that the Court will first of all examine whether, in the present case, as the applicant claims, the Board of Appeal infringed Article 75 of Regulation No 207/2009.

33 In the first place, as regards the earlier decisions of the Opposition Division, that of the First Board of Appeal and that of the Cancellation Division to which the applicant had referred, the Board of Appeal stated that it was not bound by those decisions (paragraph 35 of the contested decision). In that regard, it merely stated that, apart from the fact that decisions must be adopted on a case-by-case basis, respect for the principle of equal treatment must be consistent with respect for the principle of legality. As the lawfulness of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of EUIPO’s previous decision-making practice and independently of any national system, earlier decisions of EUIPO cannot be relied on before the Board of Appeal.

34 It must be noted that, as argued by the applicant in its first plea, it had relied before the Cancellation Division on EUIPO decisions which found that the earlier mark has a reputation and is widely known by the public. It had, more specifically, mentioned, summarising them in the language of the case, the relevant parts of those decisions, the content of which is not called into question in the context of the present action.

35 First, it is apparent from the decision of EUIPO of 26 February 2002 (Opposition B340127), which has not been annulled and was produced as document No 94 in the context of the procedure before EUIPO, that the earlier mark had been found, on the basis of the documents provided by the applicant, to enjoy a substantial reputation in the European Union, at least as concerns fine leather goods, more specifically for goods made of leather or of imitations of leather not included in other classes, trunks, suitcases, rucksacks, handbags, briefcases, pocket wallets, purses, umbrellas, parasols and canes.

36 In that decision of 26 February 2002, the following evidence of the reputation of the earlier mark was listed: press cuttings published between 1985 and 1995, including an excerpt from a French press publication containing the history of the company, an index of the names of magazines that published various advertisements between 1984 and 1999 and the dates of those publications, extracts from the applicant’s website that could be consulted ‘from any country’, in four languages. The following evidence had also been listed, in order to show that the earlier mark had a reputation due to its long-standing, consistent and substantial use: evidence relating to the long-standing use of the earlier mark, the geographical extent of the use, the scope of the protection, the goods bearing the earlier mark and the communications strategy concerning the earlier mark.

37 Secondly, according to the decision of EUIPO of 13 January 2006 (Opposition B662918), which has not been annulled and was produced as document No 95 in the context of the procedure before EUIPO, the earlier mark was found to enjoy a reputation in the European Union in respect of fine leather goods and similar products, namely, suitcases, bags and belts, and for textiles, shoes and clothing. The following evidence, in particular, was listed in that decision: catalogues, a list of shops, advertisements in magazines, press articles and press campaigns. EUIPO also found that the mark had a highly distinctive character in the European Union as a result of its intensive use.

38 Thirdly, in the decision of EUIPO of 22 June 2006 (Opposition B806143), which has not been annulled and was produced as document No 96 in the context of the procedure before EUIPO, the earlier mark was found to enjoy a reputation in the European Union in respect of fine leather goods and similar products, namely, suitcases, handbags and belts, and for textiles, shoes and dresses. The following evidence, in particular, was listed in that decision: press articles, press campaigns, advertisements, research and web pages. EUIPO also found that the mark had a highly distinctive character in the European Union as a result of its intensive use.

39 Fourthly, it is apparent, in essence, from the decision of EUIPO of 10 August 2015 (Invalidity 9393C), which has not been annulled and was produced as document No 103 in the context of the procedure before EUIPO, that the earlier mark was found to enjoy a very significant reputation in the European Union and was widely recognised by the relevant public in respect of goods in Class 18, namely, goods made of leather or of imitations of leather not included in other classes, and women’s clothing and other articles of clothing in Class 25. EUIPO had stated that the earlier mark would be recognised in almost any context and that it reflected a positive image that could favourably influence consumer choice regarding the goods or services of other manufacturers or suppliers.

40 The following evidence, inter alia, was listed in that decision of 10 August 2015: a number, defined as ‘high’, of studies, reports and rankings showing that the earlier mark was the world’s highest valued luxury brand for six consecutive years (2006 to 2012), ‘iconic and powerful’ advertisement campaigns concerning the mark, references to its success. EUIPO added that the existence of that reputation had been confirmed in decisions handed down by national authorities, its own decisions, and decisions of the Courts of the European Union. Finally, EUIPO stated, in essence, that, even though the evidence was dated closer to the date of filing of the application for registration of the mark at issue than to the date of the filing of the application for a declaration of invalidity, it could not be disputed that the earlier mark still had a reputation as of 10 August 2015. It considered that, in the light of the fact that the earlier mark’s immense reputation had been built over a period of several years, it could not exist then suddenly disappear.

41 Those earlier decisions of EUIPO, despite the fact that they were duly relied on by the applicant, were not examined or even specifically identified in the contested decision, the Board of Appeal merely having stated, as indicated above, that EUIPO was not bound by its previous decision-making practice.

42 Moreover, as regards the intervener’s argument that the contested mark targets Polish-speaking customers, it is sufficient, in order to reject that argument, to state that, in addition to the fact that the contested mark is an EU trade mark and that that argument concerns a marketing choice, those decisions of EUIPO recognise that the earlier mark has a reputation in the European Union, including in Poland.

43 In the second place, regarding the various decisions of Italian and French courts submitted by the applicant, which had mentioned, summarising them in the language of the case, the relevant parts of those decisions, the content of which is not disputed in the context of the present action, the Board of Appeal indicated that it was not bound by those decisions, which, in any event, adjudicated on a pattern, designated as the ‘Monogram canvas’ (‘the Monogram canvas’), or, occasionally, on that pattern together with the earlier mark, but never on the earlier mark alone (paragraph 35 of the contested decision).

44 The Court therefore finds that the Board of Appeal stated the reasons for which it considered that it was not required to take account of the decisions of the Italian and French courts produced by the applicant.

45 However, the fact that the Board of Appeal was not required to take into consideration the decisions of national courts submitted by the applicant, on account of the autonomous nature of the EU trade mark regime, does not mean that those decisions were not relevant. It should be noted that the findings regarding the reputation of the earlier mark made in the decisions of EUIPO mentioned in paragraphs 35 to 40 above could be supported by some of the national decisions, which reinforced the Board of Appeal’s obligation to state reasons having regard to the earlier decisions of EUIPO relied on by the applicant.

46 Thus, first, it is apparent from the decision of 18 December 2007 of the Tribunale civile di Roma (Civil Court, Rome, Italy), produced as document No 87 in the context of the procedure before EUIPO, that the national court stated that it was well known that the earlier mark had acquired, in particular for leather goods such as, inter alia, bags, suitcases and pocket wallets, a reputation on all markets, including the Italian market, and that the goods which it covered had become synonymous with luxury and fashion, were sold at a relatively high price and were intended for a truly restricted category of consumers who are particularly attentive to the quality of the product and its symbolic nature. According to the decision of 13 May 2008 of the Tribunale civile di Bologna (Civil Court, Bologna, Italy), produced as document No 86 in the context of the procedure before EUIPO, the earlier mark is not only very well known, but famous. Likewise, according to the decision of 28 April 2010 of the Tribunale di Napoli (District Court, Naples, Italy), produced as document No 84 in the context of the procedure before EUIPO, the national court ruled that the earlier mark is indisputably not only recognised, but famous. What is more, in the decision of 26 March 2013 of the Tribunale ordinario di Firenze (District Court, Florence, Italy), produced as document No 83 in the context of the procedure before EUIPO, the national court ruled that the earlier mark has a reputation.

47 Although, in those various decisions, as indicated by the Board of Appeal, the earlier mark is, admittedly, mentioned at the same time as the Monogram canvas, the fact nonetheless remains that the assessment contained in those decisions also concerns the earlier mark.

48 Secondly, it is apparent from the decision of 19 October 2012 of the Tribunal de grande instance de Paris (Regional Court, Paris, France), produced as document No 91 in the context of the procedure before EUIPO, that the national court recognised that the earlier mark has a reputation in respect of the goods which it covers.

49 It should thus be noted that the reputation of the earlier mark in the European Union was established by EUIPO in four decisions over a period of 13 years, namely between 2002 and 2015. Those decisions are supported by several national decisions handed down over a period of six years, that is, between 2007 and 2013, concerning the earlier mark and goods identical to those in the present case.

50 Moreover, the finding that the earlier mark has a reputation is a finding of a factual nature which does not depend on the contested mark (see, to that effect, judgment of 9 September 2016, Puma v EUIPO — Gemma Group (Representation of a bounding feline), T‑159/15, EU:T:2016:457, paragraph 33). Accordingly, the relevance of some of the earlier decisions of EUIPO, relied on before its adjudicating bodies, for the purposes of conducting a full assessment of whether the earlier mark has a reputation cannot be disputed and their being taken into consideration cannot be held to run counter to case-law, cited by the Board of Appeal (paragraph 35 of the contested decision), according to which the lawfulness of decisions of the Board of Appeal must not be assessed on the basis of the previous decision-making practice of EUIPO.

51 In those circumstances, in so far as the applicant specifically invoked previous decisions of EUIPO concerning the reputation of the earlier mark before the Cancellation Division as evidence of the reputation, within the meaning of Article 8(5) of Regulation No 207/2009, of the same mark as that relied on in support of its application for a declaration of invalidity, it was for the Board of Appeal, in accordance with the case-law cited and recalled in paragraphs 28 to 31 above, to take those decisions into account and to consider with especial care whether it should decide in the same way.

52 Since the Board of Appeal decided to take a different view from the one adopted in those previous decisions as regards the reputation of the earlier mark, it should, having regard to the fact that the context in which it adopted the contested decision included reliance on those previous decisions, have provided an explicit statement of its reasons for departing from those decisions. It is, however, clear that the Board of Appeal did not show in any way that the mark no longer had a reputation, or that its reputation had become weaker since those decisions were handed down, the latest of those decisions having been handed down only two years before the contested decision was adopted, or that those decisions were potentially unlawful.

53 The Court therefore holds that the decision of the Board of Appeal was adopted in breach of Article 75 of Regulation No 207/2009 and upholds the second plea, without there being any need to examine the alleged infringement of the principle of legal certainty.

54 However, although that infringement of Article 75 of Regulation No 207/2009 contributed to the fact that the Board of Appeal did not recognise the reputation of the earlier mark, that finding alone is not sufficient to annul the contested decision, in so far as the rejection of the application for a declaration of invalidity is also based on other grounds. It should be noted that the Board of Appeal also adjudicated on whether the other cumulative conditions — which are, therefore, necessary in the light of Article 8(5) of Regulation No 207/2009 — were met. Thus, it adjudicated on, inter alia, primarily, whether the marks at issue were similar and, in the alternative, whether a link could be made between those marks, even assuming that a very low degree of similarity between those marks were acknowledged and that the reputation of the earlier mark were recognised.

55 In that regard, it must be considered that, in the event that the Board of Appeal was fully entitled to find that the marks at issue are dissimilar, as EUIPO submits, the first plea must necessarily be rejected, given that one of the necessary conditions in the light of Article 8(5) of Regulation No 207/2009 will not have been met. On the other hand, if the Board of Appeal was wrong to find that the marks at issue are dissimilar or that, in any event, they could be considered to have only a very low degree of similarity (paragraphs 33, 34 and 44 of the contested decision), then the Board of Appeal’s error, established in paragraph 52 above, could have a decisive influence on the outcome of the application for a declaration of invalidity. In view of the structure of the contested decision, it is necessary to take into consideration both of those possibilities.

56 In addition, it is true that the Board of Appeal based its assessment of the existence of detriment to, or unfair advantage taken of, the distinctive character or the repute of the earlier mark, within the meaning of Article 8(5) of Regulation No 207/2009, on the assumption, mentioned in the alternative, that the earlier mark’s reputation was established (paragraph 38 of the contested decision). However, it neither provided indications as to the basis for that potential reputation nor defined the potential strength of that reputation. The latter must, however, be taken into account in the global assessment of whether such unfair advantage has been taken of, or detriment has been caused to, the distinctive character or repute of the earlier mark as regards both the assessment of a link between the marks and that of injury for the purposes of Article 8(5), which are distinct and necessary conditions.

57 The existence of a link between the marks, the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, or the existence of a serious likelihood that such injury will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41, 42, 53, 68 and 69). Furthermore, the stronger the earlier mark’s distinctive character and reputation the easier it will be to accept that harm has been caused to it (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69 and the case-law cited; judgment of 9 September 2016, Representation of a bounding feline, T‑159/15, EU:T:2016:457, paragraph 42).

58 The Board of Appeal did not, however, conduct a full assessment of the earlier mark’s reputation, which is, in addition, capable of having an impact on the assessment of the strength of the earlier mark’s distinctive character. The fact that a mark has a reputation means that it is known by a significant part of the relevant public in respect of the goods or services which it covers, which demonstrates its ability to serve as an indication of origin and its strong distinctive character.

59 In the light of the foregoing considerations, it is appropriate to examine certain questions raised in the context of the first plea, alleging infringement of Article 8(5) of Regulation No 207/2009, in order to determine, first of all, whether the Board of Appeal was correct to find that the marks at issue are dissimilar, next, whether it was entitled to disregard the reputation of the earlier mark on the basis of part of the evidence produced by the applicant and, finally, if appropriate, whether its assessment of the conclusions that can be drawn in particular from a lack of similarity of the goods or services covered in the present case in the analysis of whether there is a link between the marks at issue was vitiated by any error.

First plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009

60 The applicant submits that the contested decision is vitiated by errors, because, given the high degree of similarity between the marks at issue, the strength of the earlier mark as well as the fact that that mark has become a vehicle for communicating a message of luxury, exclusivity and elegance — regardless of the specific sector in which it is used — the use of the contested mark gives rise to both an unfair advantage in favour of the intervener and a detriment to the earlier mark.

62 It is in the light of the considerations set out in paragraphs 17 to 23 above that it is appropriate to examine, within the limits set out in paragraph 59 above, whether the Board of Appeal was correct to find that some of the conditions for the application of Article 8(5) of Regulation No 207/2009 were not met in the present case.

63 As regards the relevant public, the definition of which, for the purposes of applying Article 8(5) of Regulation No 207/2009, in the same way as in the context of the application of Article 8(1), is a prerequisite for assessing whether there is a similarity between the signs at issue, a repute of the earlier mark, and a link between the signs at issue, it should first of all be noted that, as regards the goods covered by the earlier mark, the Board of Appeal defined the relevant public as being the public at large (paragraphs 37 and 45 of the contested decision). Next, as regards the goods and services covered by the contested mark, the Board of Appeal considered that, in respect of the goods in Class 32 and the services in Class 43, the relevant public was composed of the public seeking to quench their thirst or to eat whereas, in respect of services in Class 35, it was composed of undertakings, that is, business customers (paragraphs 45 and 47 of the contested decision). Finally, it is appropriate to consider that, as the earlier mark is an EU trade mark, the relevant territory is that of the European Union. The Board of Appeal’s findings in that respect — which, moreover, the applicant does not dispute — must be upheld.

64 The applicant argues that the Board of Appeal erred in finding that there is no similarity between the signs at issue and submits that they are highly similar overall.

65 EUIPO and the intervener submit that the Board of Appeal’s assessment is not vitiated by any error. EUIPO refers, in essence, to paragraphs 24 to 31 of the contested decision. The intervener invokes the lack of evidence of the identity of or similarity between the signs at issue and claims that they cannot be associated with one another.

66 So far as concerns the visual, phonetic or conceptual similarity of the signs at issue, the comparison of the signs 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 that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

67 According to case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).

68 Moreover, an assessment of the similarity between two trade marks means more than taking just one component of a composite mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not preclude the overall impression conveyed to the relevant public by a composite trade mark from being, in certain circumstances, dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). 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, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

69 The arguments of the applicant must be examined in the light of the principles set out in paragraphs 66 to 68 above.

71 In paragraph 26 of the contested decision, the Board of Appeal based the visual comparison of the signs at issue on the overall impression which they produced.

72 In the first place, as regards the contested mark, it must be noted that it is composed of the stylised upper-case letters ‘l’ and ‘v’, in black and white, connected in such a way that the horizontal bar of the letter ‘l’ touches the ‘left diagonal stroke’ of the letter ‘v’, approximately halfway up. The words ‘power energy drink’ are situated below the letter ‘l’ and left of the letter ‘v’ in capital letters, those words being placed one above the other. The words ‘power’ and ‘drink’ are written in red and the word ‘energy’ is written in black and in a slightly larger font, as the Board of Appeal observed, in essence (paragraph 26 of the contested decision). It should also be noted that the ‘right diagonal stroke’ of the letter ‘v’ is thinner than its ‘left diagonal stroke’.

73 For the English-speaking part of the relevant public, it must be noted that the word element ‘power energy drink’ is comprehensible. The intervener states, moreover, that that element informs customers as to the goods and services in respect of which the contested mark is registered. Consequently, it must be found that, having regard to the goods in Class 32, which are all beverages, and the beverage-related services in Class 43, the word element ‘power energy drink’ will be perceived as weakly distinctive, as the Board of Appeal found (paragraph 26 of the contested decision), without, however, being negligible, contrary to what the applicant contends in essence. The element ‘lv’ must therefore be regarded as dominant and more distinctive than the element ‘power energy drink’.

74 With regard to the other services in Class 35 and Class 43, contrary to the Board of Appeal’s assessment on this point (paragraph 26 of the contested decision), the element ‘lv’ must also be regarded as dominant and more distinctive than the element ‘power energy drink’. The combination of words ‘power energy drink’, written in smaller characters than those used for the element ‘lv’, is not at all fanciful, is not unusual in any way in English and will attract the attention of the English-speaking relevant public less.

75 In any event, for the whole of the relevant public, in the light of the size of the letters ‘l’ and ‘v’, which is larger than that of the characters used for the word element ‘power energy drink’, and in view of the stylisation of those two letters, the element ‘lv’ is the dominant and most distinctive part of the contested mark.

76 In the second place, regarding the earlier mark, it must be noted that it is composed of black lines depicting the upper-case letters ‘l’ and ‘v’, stylised and superimposed, with the letter ‘v’ appearing to be positioned above the letter ‘l’. As the Board of Appeal found (paragraph 27 of the contested decision), the vertical part of the letter ‘l’ is tilted to the right and is parallel to the ‘right diagonal stroke’ of the letter ‘v’. Like the Board of Appeal, the Court finds that that stylisation is unusual and distinctive. It should also be noted that the ‘right diagonal stroke’ of the letter ‘v’ is thinner than its ‘left diagonal stroke’.

77 It is not clear from the contested decision whether the Board of Appeal found that the combination of the letters ‘lv’ is in itself devoid of distinctive character, as the applicant appears to argue. It considered that the inherent distinctive character of combinations of letters is not particularly strong (paragraph 43 of the contested decision) and the stylisation of the earlier mark was distinctive and dominated the mark (paragraph 27 of the contested decision). In any event, the Court finds, at this stage, that it is the combination of stylised letters which is distinctive, not, as argued in essence by the intervener, the stylisation alone or, as the applicant claims, the combination of letters alone.

78 In the third place, it should be noted that the letters ‘l’ and ‘v’ are common to the signs at issue. In addition, in the two signs, the extremities of the two letters are stylised in a particular manner, namely serif fonts, and the ‘right diagonal stroke’ of the letter ‘v’ is thinner than the ‘left diagonal stroke’. Although, after careful examination, the two marks are stylised differently, it must be borne in mind that the relevant public only rarely has the chance to make a direct comparison between the different marks and must rely on an imperfect recollection of them (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). What is more, in the marks at issue, the letters ‘l’ and ‘v’ are not aligned, which contributes to the similarity of the element which they make up in each of the marks. The fact that the letters ‘l’ and ‘v’ are superimposed in the earlier mark and that they are stylised in such a way as to give the impression that they are three-dimensional in the contested mark is not sufficient to counterbalance the high similarity between the ‘lv’ elements of each of the marks at issue. Likewise, the black or black and white colours of the two letters do not alter that similarity. In that regard, it is appropriate, in addition, to note that, as the protection of the earlier mark does not designate any specific colour, as was confirmed by the parties at the hearing in response to a question asked by the Court, that protection also extends to combinations of colours (see, to that effect, judgment of 18 June 2009, LIBRO v OHIM — Causley (LiBRO), T‑418/07, not published, EU:T:2009:208, paragraph 65).

79 Contrary to the intervener’s claims, the size of the letters ‘l’ and ‘v’ in the earlier mark in comparison with that of the same letters in the contested mark is not particularly relevant because, in the present case, those marks are not registered in a given size, but will vary according to the object to which they are affixed, which is apparent from document No 78 produced in the context of the procedure before EUIPO.

80 The combination of the letters ‘l’ and ‘v’ is the sole element of the earlier mark and the dominant element of the contested mark, while the element ‘power energy drink’ attracts the attention of the relevant public less (see paragraphs 73 to 75 above) It follows that, contrary to the Board of Appeal’s finding (paragraph 28 of the contested decision), the overall impressions created by the marks at issue do not differ significantly and the marks must be considered to have at least an average degree of visual similarity.

81 Moreover, it is necessary to reject the intervener’s argument challenging the applicant’s reasoning that the marks at issue are characterised by an almost identical monogram, which makes the signs at issue similar overall. According to the intervener, that reasoning implies that certain marks should never have been registered. However, it must be stated that none of the marks referred to by the intervener has the same stylisation of the letters ‘l’ and ‘v’ as that present in the marks at issue in the present case. What is more, the marks referred to by the applicant and containing the element ‘lv’ include, in addition to the contested mark, the applications for registration of various marks against which a notice of opposition has been filed by the applicant, as well as the mark LV BET ZAKŁADY BUKMACHERSKIE, at issue in the case which resulted in the judgment in Louis Vuitton Malletier v EUIPO — Fulia Trading (LV BET ZAKŁADY BUKMACHERSKIE) (T‑373/17, not published) which is being delivered today, concerning opposition proceedings brought by the applicant against the registration of that mark. Accordingly, as the applicant argues, the registration of all those marks is subject to challenge, currently pending, on its part.

82 In paragraph 29 of the contested decision, the Board of Appeal considered that, due to the very specific graphical representation of the earlier mark, the relevant public will tend to describe the mark and not to pronounce it. It concluded that the marks at issue were not phonetically similar.

83 It must be noted that the two marks contain a different number of word elements that can be pronounced. As the applicant claims, and contrary to the Board of Appeal’s finding (paragraph 29 of the contested decision), the earlier mark will be pronounced by spelling the letters ‘l’ and ‘v’. Those letters can be easily distinguished. In that connection, regarding the applicant’s argument that the Board of Appeal failed to take account of the context, that is, the public’s awareness of the earlier mark — who, on account of the reputation of that mark, cannot but immediately recognise it and pronounce it as ‘lv’ — it is sufficient to note that that argument is connected to the question of the reputation of the earlier mark, which cannot be assessed by the General Court. Nonetheless, it is clear that, in any event, regardless of that question, even if it is possible that the letter ‘v’ is occasionally pronounced before the letter ‘l’ in the earlier mark, it will be pronounced after the letter ‘l’ by part of the relevant public, which could be significant in the event that the reputation of the earlier mark is established.

84 Accordingly, as concerns at least part of the relevant public, the letters ‘l’ and ‘v’ will be pronounced in the same order and in the first place, both in the earlier mark, of which they are the sole element, and in the contested mark, of which they are the dominant part. The word element ‘power energy drink’ of the contested mark is descriptive in respect of certain goods, at the very least for the English-speaking part of the relevant public, and is, in any event, less distinctive in respect of the goods and services covered by the contested mark (see paragraphs 73 to 75 above). The pronunciation of that word element is therefore not such as to reduce the phonetic similarity resulting from the pronunciation of the letters ‘l’ and ‘v’.

85 It follows that, in the present case, there is, contrary to the findings of the Board of Appeal, a phonetic similarity between the marks at issue, which must be characterised as average at the very least.

86 In paragraph 30 of the contested decision, the Board of Appeal found that the earlier mark does not convey a concept, irrespective of whether it will be perceived as a combination of letters and whether that combination of letters is ‘vl’ or ‘lv’. It found that the marks at issue are conceptually dissimilar.

87 The Court finds, as the Board of Appeal did, that the earlier mark does not convey any concept. As regards the contested mark, on account of the presence of the word element ‘power energy drink’, it may be understood by the English-speaking part of the relevant public as referring to an energy drink. Accordingly, having regard to that part of the relevant public, the marks at issue are conceptually dissimilar.

88 In the light of the foregoing considerations, the Court finds that, at the very least for the English-speaking part of the relevant public, the signs at issue, each taken as a whole, have at the very least an average degree of visual and phonetic similarity. Even if it is assumed that they are conceptually dissimilar (see paragraph 87 above), it must be found that, overall, they are similar, contrary to the assessment of the Board of Appeal in paragraph 31 of the contested decision, and the degree of similarity is average, not ‘at most very low’, as the Board of Appeal considered in the alternative in paragraphs 32 and 42 of the contested decision. It follows that the Board of Appeal erred in its assessment of the similarity of the signs at issue.

89 As regards the reputation of the earlier mark, in addition to the considerations in paragraph 35 of the contested decision, examined in paragraphs 33 to 53 above, the Board of Appeal stated, in paragraph 33 of the contested decision, that the evidence of that reputation, produced by the applicant, referred in essence to the word mark LOUIS VUITTON and the Monogram canvas, which includes the earlier mark together with a collection of other symbols, as reproduced below:

90 The Board of Appeal found, in paragraph 33 of the contested decision, that the evidence showed use of the word mark LOUIS VUITTON and the Monogram canvas essentially for leather goods, bags in particular, and that, contrary to the Cancellation Division’s assessment, the applicant had produced no convincing evidence as regards the reputation of the earlier mark as such.

91 In that regard, in the first place, the applicant alleges that the assessment of the Board of Appeal ‘openly’ infringed a principle established by case-law and also applicable regarding evidence of reputation. Under that principle, the acquisition by a sign of distinctive character and the strengthening of its original distinctive character may arise from its use as part of a registered mark or in conjunction with a registered mark, the fundamental condition being that, as a consequence of that use, that sign may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. The applicant argues that the element ‘lv’ is the predominant and most distinctive element of the Monogram canvas, that is, the element that consumers will immediately perceive and most easily remember, which confirms that the reputation of that canvas cannot but extend to its component ‘lv’.

92 EUIPO and the intervener submit that the Board of Appeal’s assessment is not vitiated by any error and, more specifically, argue, in essence, that the fact that the name Louis Vuitton or the Monogram canvas has a reputation does not mean that the earlier mark has a reputation.

93 It must be observed that the Board of Appeal did not consider that the evidence adduced, with the exception of the brand rankings and the website Wikipedia, was not capable, by nature, of proving the reputation of the earlier mark. In its view, that evidence could not prove that reputation because, in essence, the earlier mark appeared only occasionally and never on its own in the documents in question, that is, the documents describing the history of the applicant, the books and catalogues, magazine excerpts and advertising campaigns (paragraph 34 of the contested decision). Therefore, it is correct that the Board of Appeal did not examine whether the earlier mark could have acquired a reputation through use as part of the Monogram canvas or by association with the word mark LOUIS VUITTON.

94 In particular, contrary to EUIPO’s claims, the earlier mark is not, in the Monogram canvas, ‘rather “lost” in the overall impression produced by the various elements of the pattern’, but can be perceived separately. It is of a larger size than each of the floral motifs on that canvas, which does not contain any letters other than those making up the earlier mark. Accordingly, that mark stands out, on the contrary, from the other three motifs, which resemble each other more closely. In an earlier decision cited by the applicant, EUIPO had, moreover, considered that, in particular in the Monogram canvas, that monogram is the dominant element, which is undoubtedly the reason for which it has been registered separately as an EU trade mark.

95 The Board of Appeal therefore erred in discounting the possibility that the reputation of the earlier mark could be proved in the documents produced, with the exception of the brand rankings and the website Wikipedia, on account of the mere fact that it appeared together with the Monogram canvas or the word mark LOUIS VUITTON.

96 What is more, it is clear that, as the applicant submits, the earlier mark appears alone on some of the documents produced during the administrative procedure before EUIPO, inter alia on books, in press cuttings and catalogues and, in the case of the latter, either at the bottom of the page or on photographs of goods in the catalogue concerned. Consequently, the Board of Appeal, in that regard, distorted the clear sense of some of the evidence produced.

97 In the second place, the applicant claims that the connection between the applicant and its logo, which is identical to the earlier mark, is such a close one that the applicant’s enormous fame inevitably and automatically reflects on its logo. In that regard, the applicant invokes the website Wikipedia and the brand rankings.

98 It must be observed, regarding the applicant’s argument that the fact that the website Wikipedia refers to it generally as ‘the LV company’, displaying a logo that is identical to the earlier mark as the symbol of the company, confirms that there is an unbreakable connection between the words ‘louis vuitton’ and that logo, the Board of Appeal was correct to reject that argument, since, as it is taken from a collective encyclopaedia established on the internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously, such an argument is based on information that lacks certainty (see, to that effect, judgment of 10 May 2012, Amador López v OHIM(AUTOCOACHING), T‑325/11, not published, EU:T:2012:230, paragraph 26).

99 Moreover, regarding the applicant’s argument that the rankings produced as documents Nos 1 to 31 in the context of the procedure before EUIPO use the words ‘louis vuitton’ or a logo that is identical to the earlier mark to refer to the applicant, it is necessary to determine whether that mark has a reputation and, if so, whether that reputation derives in particular from the notoriety of the name Louis Vuitton. The Board of Appeal did not, however, conduct a full assessment of the reputation of the earlier mark and, therefore, the Court cannot assess that reputation (see paragraphs 58 and 95 above).

100 It follows from the foregoing and from the findings relating to the second plea (see paragraphs 53 and 54 above) that, in the light of the evidence produced by the applicant, the Board of Appeal conducted an incomplete assessment of the reputation of the earlier mark and, in addition, distorted the clear sense of some of that evidence.

101 The Board of Appeal found, in paragraph 38 of the contested decision, that, even if the claimed reputation of the earlier mark had been proved in respect of goods in Classes 18 and 25, any use of the contested mark by the intervener in connection with the goods and services covered by the mark would not take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier mark in respect of, in essence, bags and fashion wear.

102 In that regard, in particular, the Board of Appeal considered, in paragraph 42 of the contested decision, that it was highly unlikely that the relevant public would establish a link between the marks at issue. First, an important reason for this is the fact that, if the marks at issue were perceived to be similar, the degree of similarity would be very low (paragraph 42 of the contested decision). Secondly, according to the Board of Appeal, its finding that there is no link between the marks at issue is borne out by the fact that the condition to be met for the marks to be potentially similar was that of the perception of the combination of letters ‘lv’ in the earlier mark and by the fact that the inherent distinctive character of combinations of letters is not very strong (paragraph 43 of the contested decision). Thirdly, the goods or services covered by the marks at issue are not only entirely different in nature, purpose and method of use, but, in addition, lack any connection between them and target completely different sections of the public (paragraphs 44 to 47 of the contested decision).

103 The applicant argues that the Board of Appeal erred in finding that there is no link between the contested mark and the earlier mark (paragraphs 42 to 47 of the contested decision). It claims that if, in particular, the Board of Appeal had not erred in its assessment of the existence and strength of the reputation of the earlier mark and the inherent distinctive character of that mark, having regard to the goods concerned, and of the degree of similarity of the signs at issue, it would have had to find that there is a link between the marks at issue, regardless of the closeness between the goods or services concerned.

104 EUIPO and the intervener submit that the Board of Appeal’s assessment is not incorrect.

105 It should be borne in mind that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see judgment of 6 July 2012, Jackson International v OHIM — Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 19 and the case-law cited).

106 The existence of a link between the marks at issue on the part of the public concerned must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include: the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services and the relevant section of the public; the strength of the earlier mark’s reputation, and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (see, to that effect, judgment of 6 July 2012, ROYAL SHAKESPEARE, T‑60/10, not published, EU:T:2012:348, paragraph 21; see also, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42). In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM — Staccata (QUARTODIMIGLIO QM), T‑76/13, not published, EU:T:2015:94, paragraph 125).

107 It should, however, be borne in mind that, contrary to Article 8(1)(b) of Regulation No 207/2009, which is designed to apply only if there exists a likelihood of confusion on the part of the public, Article 8(5) of Regulation No 207/2009 establishes, for the benefit of trade marks with a reputation, a form of protection whose implementation does not require the existence of such a likelihood (see, to that effect and by analogy, judgment of 23 October 2003, Adidas-Salomon and Adidas Benelux, C‑408/01, EU:C:2003:582, paragraph 27). Article 8(5) of Regulation No 207/2009 is intended to prevent freeriding, dilution by blurring and dilution by tarnishment of the earlier mark, or the likelihood of such injury (see, to that effect, judgments of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraphs 39 to 41, and of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling), T‑624/13, EU:T:2015:743, paragraphs 99, 114 and 123).

108 In that regard, it must be noted that, although the Board of Appeal examined the possibility that the public concerned would establish a link between the marks at issue, it first based its analysis on an incorrect assessment of the similarity of the marks at issue (see paragraph 88 above).

109 Next, in addition to the Board of Appeal’s established inadequacies and errors in connection with the assessment of the reputation of the earlier mark (see paragraph 100 above), it is clear that, although the Board of Appeal analysed whether there is a link between the marks at issue, assuming that the earlier mark has a reputation, without stating on what evidence that potential reputation was based, it did not state its finding on the strength of that reputation in the alternative, even though that finding is relevant to the overall assessment that the Board of Appeal is required to carry out (see paragraphs 56 and 57 above). In addition, it is not clear from the contested decision how that reputation, if it were deemed to exist, could have influenced the existence of such a link.

110 Finally, the Board of Appeal pointed out that the goods and services concerned are different. In that regard, it should nonetheless be observed that, in the light of the clear wording of Article 8(5) of Regulation No 207/2009 — which, in the version applicable to the proceedings (see paragraph 19 above), specifically and solely provides for a situation in which the goods or services concerned are dissimilar — a condition of similarity of the goods or services cannot be imposed. Accordingly, if the nature of the goods or services concerned is one of the factors that must be taken into account in the assessment of whether there is a link on the part of the public concerned, the lack of similarity between those goods or services cannot be interpreted as implying that there is no such link (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 42 and 61).

111 It must be borne in mind that the relevant public’s assessment of the link between the signs at issue is likely to vary according to the strength of the reputation (see judgment of 4 October 2017, Gappol Marzena Porczyńska v EUIPO — Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 197 and the case-law cited). Certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services in respect of which those marks were registered (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 51).

112 Having regard to all the foregoing, the Court finds that the Board of Appeal’s assessment as regards the application of Article 8(5) of Regulation No 207/2009 is vitiated by several errors or lacunae, relating to the comparison of the signs at issue, the existence of the reputation of the earlier mark and, as the case may be, the strength of that reputation — which is liable to have an impact also on the assessment of the degree of distinctiveness of the earlier mark —, and the importance that must be attached to the lack of similarity of the goods or services concerned in the present case.

113 These incorrect or incomplete assessments are capable of having a decisive influence on the outcome of the application for a declaration of invalidity since, in accordance with the case-law cited in paragraph 106 above, the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 or a serious likelihood that such injury will occur in the future must be assessed globally, taking into account all factors relevant to the circumstances of the case.

114 In those circumstances, it will fall to the Board of Appeal, which must take the necessary measures to comply with the present judgment, to adjudicate on the infringement of Article 8(5) of Regulation No 207/2009.

115 In the light of all the foregoing considerations, the contested decision must be annulled, thereby upholding the applicant’s claim to that effect.

116 Under Article 134(1) 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. Moreover, under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.

117 Since EUIPO and the intervener have been unsuccessful in the present case, they must, in accordance with the form of order sought by the applicant, be ordered to bear their own costs and to each pay one half of the costs incurred by the applicant.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 March 2017 (Case R 906/2016-4);

2. Orders EUIPO to bear its own costs and to pay one half of the costs incurred by Louis Vuitton Malletier;

3. Orders Bee-Fee Group Ltd to bear its own costs and to pay one half of the costs incurred by Louis Vuitton Malletier.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Louis Vuitton Malletier v EUIPO - Bee-Fee Group (LV POWER ENERGY DRINK) (EU trade mark - Judgment) [2018] EUECJ T-372/17 (29 November 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T37217.html Cite as: EU:T:2018:851, [2018] EUECJ T-372/17, [2019] ETMR 15, ECLI:EU:T:2018:851

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