Novomatic v EUIPO - Brouwerij Haacht (PRIMUS) (EU trade mark - Judgment) [2020] EUECJ T-669/19 (09 September 2020)

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(EU trade mark – Opposition proceedings – Application for European Union word mark PRIMUS – Earlier EU word mark PRIMUS – Earlier Benelux word mark PRIMUS – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EU) 2017/1001)

Novomatic AG, established in Gumpoldskirchen (Austria), represented by W. Mosing, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

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

Brouwerij Haacht NV, established in Boortmeerbeek (Belgium), represented by G. Glas and E. Taelman, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 July 2019 (Case R 2528/2018-5), relating to opposition proceedings between Brouwerij Haacht and Novomatic,

composed of A. Kornezov, President, E. Buttigieg and J. Passer (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 2 October 2019,

having regard to the response of EUIPO lodged at the Court Registry on 20 December 2019,

having regard to the response of the intervener lodged at the Court Registry on 19 December 2019,

having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 22 October 2015, the applicant, Novomatic AG, 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), as amended (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 in respect of which registration was sought are in Class 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Casino fittings, namely roulette tables, roulette wheels; Casino games with or without prize payouts, automated gaming machines and amusement machines, in particular for commercial use, in casinos and amusement arcades, or games of chance with prize payouts via the internet and via telecommunications networks, games of chance with prize payouts for use on networked gaming equipment; Slot machines and/or electronic money-based gaming apparatus with or without prizes; Housings for slot machines and gaming machines; Electronic or electrotechnical gaming apparatus, gaming machines and automatic gaming machines, slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and amusement arcades, with or without a prize payout; Housings for slot machines, gambling machines, automatic gaming machines and amusement machines, operated by means of coins, tokens, tickets or by means of electronic, magnetic or biometric storage media; Electric, electronic or electromechanical apparatus for bingo games, lotteries or video lottery games and for betting offices, networked or unnetworked; Electropneumatic and electric pulling machines (gaming machines)’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2015/09 of 4 November 2015.

5 On 1 February 2016, the intervener, Brouwerij Haacht NV, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

– the Benelux word mark PRIMUS, filed and registered on 20 April 1971, under No 21 521 designating goods in Classes 32 and 33 and corresponding, respectively, to the following descriptions: ‘Lemonades, drinking waters and beers’ and ‘Wines’;

– the European Union word mark PRIMUS, filed on 23 April 2009 and registered on 7 October 2009, under number 8 239 378, designating goods in Class 32 and corresponding to the following description: ‘Beers’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8 On 25 October 2018, the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion between the marks at issue and that the reputation of the earlier marks had not been established.

9 On 20 December 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 19 July 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division.

11 In the first place, the Board of Appeal found, as did the Opposition Division, that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the ground that the goods covered by the earlier marks and those covered by the mark applied for were different.

12 In the second place, the Board of Appeal found, contrary to the Opposition Division, that the evidence submitted by the intervener established the reputation of the earlier word marks, within the meaning of Article 8(5) of Regulation 2017/1001, and that the conditions necessary for the application of that provision were met in the present case.

– annul the contested decision with the consequence that the opposition is rejected and the mark applied for is registered;

– order EUIPO and the intervener to bear their own costs and to pay those incurred by the applicant in the proceedings before the Court and the Board of Appeal.

– order the applicant to pay the costs, including those incurred before the Board of Appeal.

16 It is apparent from the background to the dispute set out in paragraphs 1 to 12 above that, although the application for registration of the contested mark was filed under Regulation No 207/2009, the contested decision was issued by the Board of Appeal after Regulation 2017/1001 entered into force.

17 However, since that regulation codified Regulation No 207/2009 without substantially amending the provisions thereof which are relevant to the present dispute, reference will, in the remainder of this judgment, be made exclusively to the provisions of Regulation 2017/1001.

18 In support of the application, the applicant formally raises two pleas in law. The first alleges infringement of essential procedural requirements, in that the Board of Appeal failed to satisfy the requirements of evidence in terms of legal certainty, protection of legitimate expectations and the fact that it claimed that the applicant had failed to submit any comments in terms of due cause for using the trade mark applied for. The second alleges infringement of Article 8(5) of Regulation 2017/1001 and Article 7(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).

19 In so far as the pleas in law raised by the applicant overlap, the Court considers it appropriate to examine them jointly.

20 Article 8(5) of Regulation 2017/1001 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) thereof, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or 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 Union or, 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 reputation of the earlier trade mark.

21 It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that, first, the signs must be identical or similar; secondly, the earlier mark cited in opposition must have a reputation; and, thirdly, there must be a risk that 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 mark (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54).

22 It should be noted that the existence of a similarity between an earlier mark and a mark applied for is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001. That requirement presupposes, both within the framework of Article 8(1)(b) and Article 8(5), that there are, in particular, elements of visual, phonetic or conceptual similarity (see, to that effect, judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 52, and of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 148).

23 In the present case, as with the Board of Appeal’s assessment in paragraph 23 of the contested decision, and without the applicant contesting it moreover, the signs must be found to be identical, since they are composed exclusively of the word element ‘primus’.

24 It follows that, in the present case, the first condition for the application of Article 8(5) of Regulation 2017/1001 is satisfied.

25 The applicant claims that the contested decision is not based on concrete and objective evidence, but that the Board of Appeal based its assessment on presumptions and probabilities to establish the reputation of the earlier marks, including in Belgium. In that regard, it sets out, for each item of evidence on which that decision is based, the reasons why they are insufficient to demonstrate the existence of such a reputation for beer or the genuine use of the marks in Belgium and, a fortiori, in the Union.

27 In the present case, for the purposes of assessing the existence of a reputation of the earlier marks, the intervener submitted the following evidence:

– Exhibit 1: a publication about the history of the intervener’s brewing activities in general and the use of those marks in particular;

– Exhibit 2: photographs of a beer glass and a bottle bearing those marks, some dated 14 February 2017, others undated;

– Exhibit 3: advertisements of the same marks displayed in shops; the photos are dated and bear the indication of the place where they were taken;

– Exhibit 4: photographs of trucks and lorries carrying advertisements for such marks, partly dated 2017;

– Exhibit 5: an overview of point-of-sale material, namely products derived from the beers of the marks at issue;

– Exhibit 6: an article titled ‘A refreshing new brand for PRIMUS’, dated 2010, together with photographs;

– Exhibit 7: the promotional magazine ‘Free spirits’ dated 2015 and published by the intervener, containing various articles on the beers marketed by the intervener, together with photographs;

– Exhibit 8: a list of prices for the main beers of the intervener, including beers of similar brands, for the years 2013, 2014 and 2016;

– Exhibit 9: a selection of invoices covering the period from 2008 to 2017, sent to customers in the Benelux countries for various beverages, in particular beer;

– Exhibit 10: examples of sponsorship activities organised by the intervener for the goods ‘beer’, and more particularly the marks at issue;

– Exhibit 11: various newspaper articles relating to the marks concerned, published between 2007 and 2016;

– Exhibit 12: a publication entitled ‘Medium companies of Europe 1993/1994’;

– Exhibit 13: publications of test results for pilsner-type beers in 2011 and 2012, with the rankings obtained by the abovementioned marks;

– Exhibit 14: information relating to various awards won by beer of the abovementioned marks in 2011, 2012, 2013 and 2015;

– Exhibit 15: a declaration of a data, insight and consultancy company, dated 20 July 2017, indicating that the intervener commissioned several brand tracking surveys concerning the beer market in March 2014, March 2015 and March 2016, the method used consisting of computer-assisted online interviews comprising three questions;

– Exhibit 16: four types of gaming establishments and listing the drinking establishments;

– Exhibit 17: a list of drinking establishments with license to operate gambling machines;

– Exhibit 18: various documents including information about gaming activities in Belgium.

28 The applicant raises, in essence, two complaints seeking to show that the earlier marks do not have a reputation.

29 Firstly, the applicant submits that none of the evidence adduced by the intervener, referred to in paragraph 27 above, with the exception of Exhibits 8, 9 and 11 to 18, refers to the earlier marks as registered, but to other forms in which those marks are used. By its argument, it thus, in essence, implicitly alleges that the Board of Appeal infringed point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

30 Secondly, the applicant contends that the Board of Appeal relied on presumptions and probabilities in order to conclude that the earlier marks had a reputation and that the Board of Appeal infringed Article 7(2) of Delegated Regulation 2018/625.

31 Point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 refers to the case where a registered trade mark, whether national or of the European Union, is used in trade in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect, judgment of 10 October 2018, LA Superquimica v EUIPO – D-Tack (D-TACK), T‑24/17, not published, EU:T:2018:668, paragraph 45 and the case-law cited). Those lessons apply, mutatis mutandis, where proof of the reputation of a trade mark, within the meaning of Article 8(5) of Regulation 2017/1001, relates to shapes which differ in elements which do not alter the distinctive character of that mark in the form in which it was registered.

32 Therefore, a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the various elements within the arrangement of the trade mark (see judgment of 10 October 2018, D-TACK, T‑24/17, not published, EU:T:2018:668, paragraph 46 and the case-law cited).

33 It should be noted that, in order for point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign and their weak distinctive character (see judgment of 10 October 2018, D-TACK, T‑24/17, not published, EU:T:2018:668, paragraph 48 and the case-law cited).

34 Finally, it also follows from the case-law that the fact that the registered mark is sometimes used with additional elements and sometimes without can be one of the criteria from which it may be inferred that there has been no alteration of distinctive character (see judgment of 10 October 2018, D-TACK, T‑24/17, not published, EU:T:2018:668, paragraph 49 and the case-law cited).

35 Moreover, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their word elements than by describing the figurative elements of that mark (see judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 78 and the case-law cited).

36 In the present case, the evidence adduced by the intervener, referred to in paragraph 27 above, reveals the use of the earlier marks in different forms for which they were registered. Even if, with the exception of Exhibit 1, the applicant merely refers to an alteration in distinctive character without, however, analysing its various components, it must be examined whether those marks in the forms used alter the distinctive character of those marks in their registered forms.

37 In that regard, the Board of Appeal held, in paragraphs 34 to 36 of the contested decision, that the evidence at issue referred both to the word marks PRIMUS or PRIMUS PILS and to figurative signs, and that the addition of figurative elements and the word ‘haacht’, namely the name of the brewery, did not alter the distinctive character of the earlier marks in the form in which they had been registered, so that, consequently, a reputation was indeed associated with those marks.

38 It should be noted, first of all, that the use of the word mark PRIMUS PILS is not such as to alter the distinctive character of the earlier marks in their registered form, which is not disputed by the applicant.

39 In addition, it is apparent from the evidence at issue that the earlier marks, in the form first used, are represented as follows:

40 The figurative sign, referred to in paragraph 39 above and corresponding to the first form used of the earlier marks, consists of the word element ‘primus’ in red, placed in the centre of the sign, below which is the word ‘haacht’ in black and above which is, inter alia, affixed a figurative element representing a knight, the whole appearing on a beige background.

41 As regards the word elements, it must be noted that the word ‘primus’ is the dominant element of the first form of the earlier marks used. That word is placed in the centre of that form in larger proportions than the word ‘haacht’ and the expressions, situated on either side of the knight, are difficult to read and must therefore be regarded as negligible. As regards the word ‘primus’, the applicant’s argument that it is of laudatory character for the goods, referred to in paragraph 6 above, for which the earlier marks are registered cannot succeed. Even supposing that the relevant public for the goods referred to in paragraph 6 above have sufficient knowledge of the Latin language, the Latin word to which that term refers is, above all, an ordinal numeral adjective, which does not immediately convey an idea of excellence (see, to that effect, judgment of 24 September 2015, Primagaz v OHIM – Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 62). The distinctive character of the word in question cannot therefore be called into question. As regards the word ‘haacht’, it refers to the name of the company which markets the goods covered by the earlier marks, but it simply indicates the name of the manufacturer’s company, which may provide a direct link between one or more product lines and a specific undertaking, and the joint use of those elements does not undermine the function of the earlier marks as a means of identifying the goods at issue (see, to that effect, judgment of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 36).

42 In terms of figurative elements, the knight is of medium size and, because of its size and location, appears secondary, but not negligible, in the overall impression of the sign. Indeed, it is not devoid of distinctive character, as EUIPO points out, in relation to the goods in question. However, its presence does not diminish the distinctive character of the word element ‘primus’. Furthermore, the beige background is ordinary and cannot be understood as an element, alone or in combination with others, which alters the distinctive character of the earlier marks.

43 Accordingly, it is apparent from the overall impression of the sign corresponding to the first form of the earlier marks used that it is dominated by the word element ‘primus’ and that the elements added to those marks in the course of that use do not alter the distinctive character of those marks in their registered form.

44 Furthermore, it is apparent from the evidence at issue that the earlier marks, in the second form used, consist of the figurative sign referred to in paragraph 39 above, to which are added verbal and figurative elements, as reproduced below:

45 The expression in grey ‘brewed and bottled in’ and the word in grey ‘belgium’ below it, both indicating the place of production of the products, appear secondary and will not be pronounced by the consumer.

46 The figurative elements other than the knight, which was examined in paragraph 42 above, are not distinctive and dominant and cannot, in the overall impression of the figurative sign, referred to in paragraph 44 above and corresponding to the second form used of the earlier marks, attract the attention of consumers. The representation of a number of plants (hops and malt) intertwined in green, situated in the lower part of the sign, appears to be secondary, despite its large size. Furthermore, that representation of hops and malt refers to beer and can therefore be regarded as descriptive of the product for which the earlier marks were registered. The fact that all those elements are surrounded by an octagon set against a shaded background of green which is lighter in the centre and darker at its edge does not further detract from the distinctive character of the marks in their registered form.

47 Accordingly, it is apparent from the overall impression of the sign corresponding to the second form of the earlier marks used that it is dominated by the word element ‘primus’ and that the elements added to those marks in the course of that use also do not alter the distinctive character of those marks in their registered form.

48 Consequently, irrespective of the form in which the earlier marks have been used, the elements added to those marks in that context do not alter the distinctive character of those earlier marks in their registered form.

49 It is therefore necessary to examine, in the light of all the evidence at issue, whether a reputation can be established for the earlier marks referred to in paragraph 6 above.

50 It should be noted that, in order to comply with the condition for the application of Article 8(5) of Regulation 2017/1001 relating to the existence of a reputation of the earlier mark invoked in support of the opposition, a mark must be known by a significant part of the public which is relevant with regard to the goods or services covered by that mark. In examining whether that condition is fulfilled, all relevant facts of the case at hand must be taken into account, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it, and it is not required for that mark to be known by a given percentage of the public so defined or for it to have a reputation throughout the relevant territory as long as it has a reputation in a substantial part of it (judgment of 16 October 2018, VF International v EUIPO – Virmani (ANOKHI), T‑548/17, not published, EU:T:2018:686, paragraph 94).

51 However, the above list being merely illustrative, it cannot be required that proof of the reputation of a mark pertains to all those elements (see judgment of 26 June 2019, Balani Balani and Others v EUIPO – Play Hawkers (HAWKERS), T‑651/18, not published, EU:T:2019:444, paragraph 24 and the case-law cited).

52 Moreover, an overall assessment of the evidence produced by the proprietor of the mark should be carried out in order to establish whether the mark is well known (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 72). An accumulation of evidence may allow the necessary facts to be established, even though each of those pieces of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 26 June 2019, HAWKERS, T‑651/18, not published, EU:T:2019:444, paragraph 29 and the case-law cited).

53 In the first place, it is necessary to examine whether Exhibits 2 (in part), 7 (in part), 9, 11 and 13, referred to in paragraph 27 above, may be taken into consideration in the assessment of the reputation of the earlier marks, despite the fact that they were not supplied in the language of the proceedings, namely English, and that they are not accompanied by a translation.

54 It is apparent from the file that not only did EUIPO not request a translation of the documents referred to in paragraph 53 above, filed by the intervener (opponent) in order to establish a reputation, but also that the applicant itself did not make such a request, with the result that its arguments seeking a declaration that that evidence was not written in English, without drawing the consequences by raising the inadmissibility thereof, must be rejected. In any event, the applicant was able to submit its observations, including on that evidence, which shows that it was able to understand it and usefully present its point of view during the administrative procedure.

55 Therefore, the evidence, referred to in paragraph 53 above, must be taken into account in the examination of the existence of a reputation of the earlier marks.

56 In the second place, it is necessary to examine whether certain evidence referred to in paragraph 27 above which do not bear a date or bear dates subsequent to the date of filing of the application for registration of the mark applied for, namely 22 October 2015, may be taken into consideration in the assessment of the reputation of the earlier marks.

57 In that regard, it should be noted that the reputation of an earlier mark must be established as at the filing date of the application for the mark applied for (see judgment of 16 October 2018, ANOKHI, T‑548/17, not published, EU:T:2018:686, paragraph 103 and the case-law cited).

58 Furthermore, the documents dated after the date on which the application for registration of the mark applied for was filed can retain a probative value if they enable conclusions to be drawn on the situation as it had been on that date. It cannot therefore be excluded a priori that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively (see judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 121 and the case-law cited).

59 Moreover, although an undated document has no probative value in itself, the Board of Appeal does not commit an error of assessment by taking that document into account for the purposes of examining the nature of use if that document is capable of supporting other evidence (see, to that effect, judgment of 25 April 2018, Walfood v EUIPO – Romanov Holding (CHATKA), T‑312/16, not published, EU:T:2018:221, paragraph 138 and the case-law cited).

60 In the present case, it should be noted that Exhibits 1, 2 (in part), 5 and 18 (in part), referred to in paragraph 27 above, are not dated. However, even if the abovementioned Exhibits 1, 2 (with the exception of two photographs) and 5 are undated and therefore devoid of probative value, it must be concluded that they are capable of supporting other documents demonstrating the affixing of the sign, in particular on the fronts of breweries, such as Exhibit 3, or on promotional materials in order to sponsor a cycle race, such as Exhibit 10, in order to establish the use of the earlier sign. Therefore, the Board of Appeal did not make an error of assessment in taking those documents into account for the purposes of the examination of the reputation of the earlier marks. As regards Exhibit 18, that exhibit is not relevant for the purpose of proving reputation, but rather for the purpose of proving the possible existence of a risk that the use without due cause of the mark applied for might take unfair advantage of the distinctive character or that reputation or be detrimental to the earlier marks.

61 It should also be noted that Exhibits 4, 9 (in part), 15, 16 and 17, referred to in paragraph 27 above, have dates which are later than 22 October 2015.

62 As regards Exhibit 4, it contains four photographs dated 2017 with the caption ‘Trucks and trailers of Haacht Brewery with PRIMUS publicity’. However, it is apparent from the case file that no other documents corroborate the fact that such advertising existed prior to the date of filing of the trade mark application, so that, in accordance with the case-law cited in paragraph 58 above, that document does not establish that that situation existed on 22 October 2015.

63 As regards Exhibit 9, it contains invoices, a series of which were issued after the date of filing of the trade mark application, namely in 2016 and 2017. However, they are a continuation of the invoices dated from 2008 to 2015, so that, in accordance with the case-law cited in paragraph 58 above, they must be taken into consideration in the examination of the existence of a reputation of the earlier marks.

64 With respect to Exhibit 15, it contains a declaration dated 20 July 2017 from a company that conducted a study to assess the level of awareness of the earlier marks. That declaration, although drafted and filed after 22 October 2015, is evidence that studies were carried out in March 2014, March 2015 and March 2016, even though the latter study was carried out after the date of the filing of the application for registration. Therefore, in accordance with the case-law cited in paragraph 58 above, that declaration is relevant in that it makes it possible to assess the level of knowledge of the earlier marks prior to 22 October 2015, at least in so far as it relates to studies carried out in March 2014 and March 2015.

65 As regards Exhibits 16 and 17, they contain, respectively, a screenshot dated 25 August 2017 and an excerpt from a list of licensed gaming machines dated 27 October 2017. However, it must be noted that those documents are not relevant for proving the reputation of the earlier marks but rather for proving the possible existence of a risk that the use without due cause of the mark applied for might take unfair advantage of the distinctive character or the reputation of those marks or be detrimental to the earlier marks.

66 It follows from the foregoing that Exhibits 4, 16, 17 and 18 must be excluded from the examination as to whether the earlier marks have a reputation.

67 In the third place, the existence of the reputation of the earlier marks must be examined in the light of all the evidence to be taken into consideration.

68 As a preliminary point, it should be noted that the Board of Appeal concluded, in paragraphs 27, 37 and 40 of the contested decision, without the parties calling it into question, that all the evidence at issue concerned the territory of Belgium and that the public concerned for the products referred to in paragraph 6 above consisted of the general public as well as professionals providing bar services.

69 Furthermore, the Board of Appeal concluded, in essence, in paragraph 37 of the contested decision, that, although market shares and sales figures were missing, there was sufficient evidence to show that the earlier marks had been used extensively in Belgium and that, given the great diversity and peculiarity of the beer market in Belgium, the levels of knowledge of those marks indicated were sufficient to conclude that those marks enjoyed a certain level of reputation in Belgium for lager beers, which was associated with the concepts of refreshment and relaxation.

70 In that regard, it should be noted, as did the Board of Appeal, that the evidence does not contain either data relating to the market shares held by the applicant for the marketing of the beer under the earlier marks or data relating to turnover or sales.

71 However, firstly, although the invoices (Exhibit 9) do not provide information on the selling prices of the beers, since they were concealed by the intervener, it must be considered, as did the Board of Appeal and in view of the large number of invoices produced, that the earlier marks were used throughout the period covered by the invoices, namely from 2008 to 2017.

72 Secondly, the evidence shows that the earlier marks are particularly well known in Belgium. In that regard, the 39 photographs (Exhibit 3), dated from 4 February to 11 August 2015, show establishments and public houses with the sign PRIMUS on their facades in a number of towns covering a geographical area extending from the region of Brussels (Belgium) to Antwerp (Belgium) to the eastern border with the Netherlands.

73 Thirdly, as noted by the Board of Appeal, the declaration of the data, insight and consultancy company and the results of the tracking surveys (Exhibit 15) corroborate the knowledge of the earlier marks on the beer market in Belgium. Those marks are mentioned in particular as the fourth lager beer by the respondents.

74 Fourthly, the examples of sponsorship of cycling races and advertising operations (Exhibit 10) are objective evidence of the existence of a reputation of the earlier marks. They appear in particular on advertising hoardings located along the routes of cycle races, on those present behind the riders at the prize-giving ceremony, on the prizes themselves as well as on the barrels of beer, or even on the jerseys of certain riders. It must be noted that the sponsorship of those events was extended in time with the 2011 to 2013 editions of the Tour of Flanders, the 2014 edition of the Tour of Belgium, the 2014 edition of the Eneco Tour of the Benelux and the 2009 to 2015 editions of a race called Primus Classic Impanis – Van Petegem. The evidence relating to the sponsorship of sporting events forms part of the investments made by the undertaking to promote its trade mark, within the meaning of the case-law cited in paragraph 50 above, and the efforts made to promote the trade mark constitute one of the factors making it possible to establish the notoriety of a trade mark (judgment of 26 June 2019, HAWKERS, T‑651/18, not published, EU:T:2019:444, paragraph 31).

75 Fifthly, the awards and distinctions obtained (Exhibits 8 and 14) by the earlier marks for several successive years, namely 2011, 2012, 2013 and 2015 for the prizes awarded by the International Taste and Quality Institute or the recognition of the Primus premium pils beer which came third in the classification for the years 2011 and 2012 (Exhibit 13), reinforce the knowledge and importance of the use of those marks on the beer market in Belgium, within the meaning of the case-law cited in paragraph 50 above.

76 Sixthly, the other evidence provided by the intervener, in particular extracts from newspaper articles (Exhibit 11), which refer to the earlier marks in a scattered and brief manner, or from magazines (Exhibit 7), are, by contrast, not convincing in order to establish the reputation of those marks.

77 It follows from the foregoing that, assessed as a whole in the light of the case-law cited in paragraphs 51 and 52 above, that evidence sufficiently establishes that the earlier marks enjoy a certain reputation for lager beers in Belgium.

78 Therefore, the second condition for the application of Article 8(5) of Regulation 2017/1001 is satisfied.

The existence of a risk that the use of the mark applied for without due cause will take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier marks

79 The applicant submits that the existence of a link in the mind of the relevant public is not in itself sufficient to conclude that there is an infringement against which Article 8(5) of Regulation 2017/1001 grants protection. According to it, the PRIMUS sign has a laudatory character and will be understood by that public as referring to what is of premium quality or as a black knight for beers. It states that, by means of that sign, it wishes to refer to the quality of its products without associating them with beer.

80 According to the applicant, the Board of Appeal established a link between the marks at issue on the basis of a supposition, since the contested decision does not refer to any evidence and limits its assessment to the question of the identity of the signs, although that is only one factor among others for the assessment of the reputation of the earlier marks. It takes the view that, even if it is possible to find gaming machines in bars or establishments in Belgium, the Board’s assessment disregards the fact that the goods at issue have different final consumers, namely, on the one hand, owners of bars or establishments and, on the other hand, consumers of beer. Furthermore, it observes that that decision ignores the fact that the gaming sector is a regulated sector whose exercise is subject to authorisation by the issue of a licence and that the relevant public would not make a link between products under public licence and beer.

82 It should be noted that the advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the reputation of that mark where that party seeks to ride on the coat-tails of the mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image, so that the marketing of the goods designated by the mark applied for is made easier by that association with the earlier mark with a reputation (see, to that effect, judgment of 10 October 2019, McDreams Hotel v EUIPO – McDonald’s International Property (mc dreams hotels Träumen zum kleinen Preis!), T‑428/18, not published, EU:T:2019:738, paragraphs 88 and 89 and the case-law cited).

83 The types of injury referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier mark with a reputation and the mark applied for, as a result of which the relevant public makes a connection between those marks, that is to say, establishes a link between them, even though it does not confuse them. It is not therefore necessary that the degree of similarity between the earlier mark with a reputation and the mark applied for is such that there exists a likelihood of confusion on the part of the relevant public. It is sufficient that the degree of similarity between the mark with a reputation and the mark applied for establishes a link between those marks (see judgment of 10 October 2019, mc dreams hotels Träumen zum kleinen Preis!, T‑428/18, not published, EU:T:2019:738, paragraph 29 and the case-law cited).

84 The existence of the link referred to in paragraph 83 above, together with the existence of a likelihood of confusion, must be assessed globally, taking into account all the 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 those marks, 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, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (see judgment of 10 October 2019, mc dreams hotels Träumen zum kleinen Preis!, T‑428/18, not published, EU:T:2019:738, paragraph 30 and the case-law cited).

85 It is also necessary to take into consideration the fact that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question. That is why the level of attention of that public is also a relevant factor for the assessment of whether there is a link between the marks at issue (judgment of 10 October 2019, mc dreams hotels Träumen zum kleinen Preis!, T‑428/18, not published, EU:T:2019:738, paragraph 31 and the case-law cited).

86 It is necessary to examine, firstly, the definition of the relevant public, secondly, the existence of a link between the marks at issue and, thirdly, the existence of due cause.

87 The Board of Appeal held, in paragraph 40 of the contested decision, that the public concerned by the goods covered by the earlier marks consisted of the general public as well as professionals providing bar services. It also found that the goods covered by the mark applied for were intended for professionals operating bars, casinos or other establishments where it was possible to install gaming machines. Thus, it noted that those publics overlapped in that they were made up of professionals.

88 It should be noted that the reputation of a trade mark must be assessed in relation to the relevant section of the public as regards the goods or services for which that mark was registered. That may be either the public at large or a more specialised public (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 47 and the case-law cited).

89 It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, point 48).

90 It should be noted that the relevant territory is Belgium, since the reputation of the earlier marks was established in that territory.

91 Firstly, the goods covered by the mark applied for, namely equipment, such as slot machines or electronic gaming machines, casings or appliances, in the gaming sector and games of chance, are intended for a professional public, which would show a higher than average level of attention.

92 Secondly, the product in respect of which the existence of a reputation for the earlier marks has been established relates solely to lager beers which may be aimed at the average consumer, consisting both of the general public, that is to say, everyday consumers of beer, and of a professional public, who purchase beers in the course of the commercial activity of their establishment.

93 It follows that, contrary to the applicant’s contention that the final consumers of the goods of the marks at issue are different, the public concerned by the goods covered by the marks at issue overlaps in so far as it consists of professionals. In so far as the relevant public is composed of professionals, the degree of attention is high. Consequently, it is on the basis of that specialised public that it is necessary to analyse whether the relevant public is likely to make a link between those marks.

94 The Board of Appeal held, in paragraphs 38, 44 and 49 of the contested decision, essentially, that the earlier marks enjoyed a reputation for lager beers, and despite the fact that the goods at issue were different, that it was likely that professionals who ran bars, casinos or other establishments where it was not unusual to install gaming machines were familiar with those marks, the reputation of which had been established. It added that, even if that reputation was not ‘disproportionate’, the identity of the marks at issue which created a direct link between them had to be taken into account in order to establish that that public was likely to associate those marks.

95 Furthermore, the Board of Appeal found, in essence, in paragraph 50 of the contested decision, that bars belonged to a category of establishments which could obtain a licence to operate gaming and gambling machines. It noted that the intervener had produced a list of more than 4 000 pubs in Belgium which were licensed to operate up to two bingo machines and stated, in that regard, that it was therefore not impossible to envisage that a bar manager who installed such a machine would associate it with a well-known brand of beer. Consequently, it considered that the applicant would take unfair advantage of the image and recognition enjoyed by the earlier marks. Furthermore, the idea of refreshment, and even more so the idea of relaxation, could easily be associated with machines and playground equipment, since such products are designed for entertainment.

96 It is necessary to examine whether the relevant public establishes a link between the earlier marks and the mark applied for, within the meaning of the case-law cited in paragraph 82 above.

97 In the first place, since the signs are identical, it must be concluded that there is a high likelihood that the mark applied for will bring the earlier marks whose reputation has been demonstrated to the mind of the relevant public (see, to that effect, judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 26 and the case-law cited).

98 In the second place, it should be recalled that Article 8(5) of Regulation 2017/1001, having regard to its wording, does not require that the goods covered by the marks at issue be identical or similar. However, it follows from the case-law cited in paragraph 84 above that the nature of the products concerned and the degree of proximity between them are factors which may be taken into account in the overall assessment of the existence of a link between them.

99 In that regard, it must be noted that there is a difference in nature between the goods in respect of which the reputation of the earlier marks has been established and those covered by the mark applied for. Lager beers, which convey the idea of refreshment and relaxation, do not appear to be directly and immediately related to the goods covered by the mark applied for, which are intended to encourage the player to play, including for financial gain. Despite the differences in the nature of those goods, there is nevertheless a certain link between them. In that regard, it has already been recognised by the case-law that there is a certain similarity between entertainment services and beer because of their complementarity (see, to that effect, judgment of 6 July 2012, ROYAL SHAKESPEARE, T‑60/10, not published, EU:T:2012:348, paragraph 59 and the case-law cited). In establishments where beer is offered, such as pubs, it is not unusual to find terminals, machines or equipment for playing games of chance, including if they are likely to provide the player with a financial gain.

100 Furthermore, in view of the reputation of the earlier marks for lager, the relevant public, namely professionals, could make a link between those marks and the mark applied for in the event of the purchase of a gaming machine sold under the latter mark.

101 That assessment is not called in question by the applicant’s other arguments.

102 Firstly, the fact that the goods covered by the mark applied for are subject to a licence does not have the aim or effect of excluding the existence of a link between the marks at issue on the part of the relevant public. 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, judgment of 29 November 2018, Louis Vuitton Malletier v EUIPO – Fulia Trading (LV BET ZAKŁADY BUKMACHERSKIE), T‑373/17, not published, EU:T:2018:850, paragraph 110 and the case-law cited).

103 Secondly, it is necessary to reject the applicant’s argument that there is, in essence, a contradiction in the reasoning in the contested decision due to the fact that the Board of Appeal’s assessments were different when comparing the goods in the context of the examination of likelihood of confusion within the meaning of Article 8(1) of Regulation 2017/1001 and the link which the relevant public would establish between the goods within the meaning of Article 8(5) of that regulation.

104 The conclusion drawn in paragraph 18 of the contested decision and relating to the fact that those goods are different is clearly based on considerations made in the context of the assessment of the likelihood of confusion of the marks at issue pursuant to Article 8(1)(b) of Regulation 2017/1001. By contrast, the assessments concerning the goods at issue, in particular in paragraph 44 of the contested decision, are based on an analysis carried out by the Board of Appeal when examining the conditions set out in Article 8(5) of Regulation 2017/1001, and in particular the question whether the mark applied for was capable of taking unfair advantage of the repute of the earlier marks in respect of goods which were not similar to those covered by those marks. Given the fact that the scope and requirements governing the application of those provisions are different and the fact that the reasoning at issue is sufficiently clear, the applicant cannot maintain that the grounds for the contested decision are contradictory and that the latter infringes the requirements relating to the obligation to state reasons (see, to that effect, judgment of 4 October 2017, GAPPOL, T‑411/15, not published, EU:T:2017:689, paragraph 127).

105 In the third place, as is apparent from paragraph 77 above, the reputation of the earlier marks has been established for lager beers, even if it is not ‘disproportionate’, as the Board of Appeal noted in paragraph 49 of the contested decision.

106 It should be noted that a trade mark with a reputation necessarily has distinctive character, at the very least acquired through use (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 73; see, also, judgment of 26 September 2014, Arnoldo Mondadori Editore v OHIM – Grazia Equity (GRAZIA), T‑490/12, not published, EU:T:2014:840, paragraph 76 and the case-law cited). In the present case, the earlier marks thus enjoy a distinctive character acquired through use, which must be regarded as normal, in that, firstly, the relevant public will identify that the goods originate from a particular undertaking, namely the Haacht brewery, and, secondly, having regard to its meaning for that public, the term ‘primus’ cannot refer to a characteristic of the beer, namely that it is of ‘premium quality’ or that it would acquire distinctive character by referring to the ‘first black knight’. Moreover, it has not been established that that public had sufficient knowledge of the Latin language so to recognise that meaning of the Latin word ‘primus’.

107 It follows from the foregoing that, firstly, the signs are identical, secondly, the public to which the earlier marks and the mark applied for are directed overlap in that they are composed of professionals, thirdly, even if the goods are of a different nature, the relevant public is likely to make some connection between those goods, fourthly, the strength of the reputation of the earlier marks must be regarded as average and, fifthly, the latter marks have a distinctive character at least acquired through use which must be regarded as normal.

108 Consequently, there is a risk that the relevant public will associate the marks at issue.

109 The applicant claims that the registration or use of the mark applied for has or would have due cause in so far as the term ‘primus’ has a laudatory character.

111 Where the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (see judgment of 7 December 2010, Nute Partecipazioni and La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T‑59/08, EU:T:2010:500, paragraph 34 and the case-law cited).

112 In that regard, it should be noted that whether there is due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively (judgment of 16 March 2016, The Body Shop International v OHIM – Spa Monopole (SPA WISDOM), T‑201/14, not published, EU:T:2016:148, paragraph 65).

113 In the present case, the Board of Appeal considered, in paragraph 52 of the contested decision, that the applicant did not submit any observations on the existence of due cause for the use of the mark applied for.

114 In that regard, it must be noted that the applicant does not adduce any evidence to establish the existence of due cause for the use of the mark applied for.

115 The applicant’s arguments that, firstly, the term ‘primus’ has a laudatory character and is understood to refer to a premium quality product and, secondly, that the earlier marks are understood to refer to the first black knight, are unfounded, as is apparent from paragraphs 41 and 106 above.

116 Moreover, it does not appear from the documents on the file that the applicant raised, before the Opposition Division and the Board of Appeal, the argument that, in order to justify the existence of due cause, other marks for beer used the sign PRIMUS. As the intervener points out, it is therefore a new argument, which the applicant did not present before EUIPO, which the latter was not required to examine of its own motion, and which is therefore inadmissible (judgment of 18 April 2013, Peek & Cloppenburg v OHIM – Peek & Cloppenburg (Peek & Cloppenburg), T‑506/11, not published, EU:T:2013:197, paragraph 34).

117 It follows from the foregoing that the plea alleging infringement of Article 8(5) of Regulation 2017/1001 must be rejected and the action must be dismissed in its entirety without it being necessary to rule on the admissibility of the applicant’s first head of claim in so far as it relates to the consequences of the cancellation of the mark applied for.

118 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs relating to the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener. Moreover, as regards the costs incurred by the intervener before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Novomatic v EUIPO - Brouwerij Haacht (PRIMUS) (EU trade mark - Judgment) [2020] EUECJ T-669/19 (09 September 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T66919.html Cite as: [2020] ETMR 59, [2020] EUECJ T-669/19, EU:T:2020:408, ECLI:EU:T:2020:408

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