Linde Material Handling v EUIPO - Verti Aseguradora (VertiLight) (EU trade mark - Judgment) [2021] EUECJ T-644/19 (28 April 2021)

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(EU trade mark – Opposition proceedings – Application for EU word mark VertiLight – Earlier national word mark VERTI – Relative ground for refusal – No damage to reputation – No link between the marks at issue – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

Linde Material Handling GmbH, established in Aschaffenburg (Germany), represented by J.‑C. Plate and R. Kaase, lawyers,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and V. Ruzek, acting as Agents,

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

Verti Aseguradora, Compañía de seguros y reaseguros, SA, established in Madrid (Spain), represented by A. Sanz Cerralbo, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 5 July 2019 (Case R 1849/2018‑5), relating to opposition proceedings between Verti Aseguradora, Compañía de seguros y reaseguros, and Linde Material Handling,

composed of D. Spielmann, President, U. Öberg (Rapporteur) and O. Spineanu‑Matei, Judges,

having regard to the application lodged at the Court Registry on 26 September 2019,

having regard to the response of EUIPO lodged at the Court Registry on 5 December 2019,

having regard to the response of the intervener lodged at the Court Registry on 18 December 2019,

1 On 13 December 2016, the applicant, Linde Material Handling GmbH, 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 11 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: ‘Lighting and lighting reflectors, vehicle headlamps’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 246/2016 of 28 December 2016.

5 On 27 March 2017, the intervener, Verti Aseguradora, Compañía de seguros y reaseguros, SA, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier Spanish word mark VERTI, registered on 22 October 2010 under No 2926719 and covering the services ‘insurance; financial affairs; monetary affairs; real estate affairs’ in Class 36 and the services ‘building construction; repair; installation, expressly excluding those related with the motorway sector, car parks, airports and logistics platforms’ in Class 37.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001), relating to the existence of a likelihood of confusion, and in Article 8(5) of that regulation (now Article 8(5) of Regulation 2017/1001), under which 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.

8 On 31 July 2018, the Opposition Division concluded that the mark applied for was likely to take unfair advantage of the repute of the earlier mark as regards the insurance services in Class 36 and, consequently, upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001 in respect of all the goods referred to in paragraph 3 above.

9 On 19 September 2018, 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 Opposition Division.

10 By decision of 5 July 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First of all, after taking the view that the earlier mark was used for direct insurance services, the Board of Appeal stated that that mark enjoyed a certain degree of repute on Spanish territory for the insurance services in Class 36, but that the strength of that mark’s reputation could not be regarded as being particularly high. Next, it considered that the relevant public consisted of the public at large with an average level of attention, and that the marks at issue displayed an average degree of visual and phonetic similarity and a conceptual dissimilarity of limited relevance, so that there was a high degree of similarity between those marks, considered as a whole. It added that, although the goods covered by the mark applied for and the services in Class 36 covered by the earlier mark were dissimilar, they displayed some points of contact and a moderate degree of proximity. Furthermore, it considered that the earlier mark enjoyed a certain recognition which could not be regarded as being particularly high, that the inherent distinctive character of that mark had to be regarded as average and that that mark had been used and advertised intensively since 2011. According to the Board of Appeal, those circumstances made it possible to conclude that the relevant public, or at least a non-negligible part of it, will associate the mark applied for with the earlier mark, enabling the mark applied for to derive a direct benefit from the image of quality, innovation and accessibility conveyed by the earlier mark and thus to take unfair advantage of that mark’s reputation. Lastly, the Board of Appeal took the view that the applicant had not shown that it had due cause to use the mark applied for.

13 The applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 8(5) of Regulation 2017/1001, in that the Board of Appeal erred in concluding that the mark applied for would be likely to take unfair advantage of the repute of the earlier mark as regards the insurance services in Class 36, secondly, infringement of the obligation to state reasons within the meaning of the first sentence of Article 94(1) of Regulation 2017/1001, and, thirdly, infringement of the right to be heard within the meaning of the second sentence of Article 94(1) of Regulation 2017/1001.

14 As a preliminary point, it should be noted that, given the date on which the application for registration at issue was filed, namely 13 December 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.

15 Consequently, in the present case, as regards the substantive rules, the references made to the articles of Regulation 2017/1001 by the Board of Appeal in the contested decision, by the applicant in the arguments raised and by the intervener and EUIPO must be understood as referring to the provisions of Regulation No 207/2009, the wording of which is identical.

16 Without formally raising an objection of inadmissibility under Article 130 of the Rules of Procedure of the General Court, the intervener contends that, by its first plea, the applicant seeks to have the Court carry out a new examination of the evidence adduced by the intervener for the purpose of proving the reputation of the earlier mark, which is inadmissible.

17 Pursuant to Article 72(1) of Regulation 2017/1001, actions may be brought before the General Court against decisions of the Boards of Appeal in relation to appeals. In particular, the General Court may review whether those boards have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed (see, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 38 and 39, and order of 28 March 2011, Herhof v OHIM, C‑418/10 P, not published, EU:C:2011:187, paragraphs 47 and 48).

18 In addition, Article 72(3) of Regulation 2017/1001 provides that the General Court has jurisdiction to annul or to alter the contested decision, which is intended to ensure that the General Court adopts the decision which the Board of Appeal ought to have taken.

19 The General Court is not therefore bound by an incorrect assessment of the facts by the Board of Appeal, since that assessment is part of the findings disputed before it (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48, and of 5 October 2017, Versace 19.69 Abbigliamento Sportivo v EUIPO – Gianni Versace (VERSACCINO), T‑337/16, not published, EU:T:2017:692, paragraph 68).

20 In the present case, the General Court therefore has jurisdiction to examine the Board of Appeal’s assessment of the evidence adduced by the intervener, which is part of the finding the legality of which is being challenged before it.

22 Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, the earlier trade mark and where it 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 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.

23 As the three conditions laid down in Article 8(5) of Regulation No 207/2009 are cumulative, failure to satisfy one of them is sufficient to preclude that provision from being applied (judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraphs 66 and 69).

24 Furthermore, according to settled case-law, the types of injury to trade marks with a reputation, 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 marks, that is to say, establishes a link between them even though it does not confuse them (see judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 63 and the case-law cited).

25 In the absence of such a link in the mind of the public, the use of the mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 64 and the case-law cited).

26 It is also settled case-law that the existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case, including the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, 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; and the existence of the likelihood of confusion on the part of the public (see judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42 and the case-law cited, and of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 52 and the case-law cited).

27 In the present case, it is in the light of those preliminary considerations that the General Court will rule on the existence of a link, within the meaning of the case-law referred to in paragraph 24 above, made by the relevant public between the marks at issue and examine whether the Board of Appeal infringed Article 8(5) of Regulation No 207/2009.

28 The Board of Appeal found, in paragraph 70 of the contested decision, that the goods and services in question, albeit dissimilar within the meaning of Article 8(1)(b) of Regulation No 207/2009, nevertheless displayed ‘some point of contact’.

29 According to the Board of Appeal, there is, in particular, a moderate degree of proximity between the sectors in which those goods and services are found, given that the goods ‘lighting and lighting reflectors, vehicle headlamps’ covered by the mark applied for could be used to replace or repair certain components of vehicles that are insured through the services covered by the earlier mark.

30 In paragraph 88 of the contested decision, the Board of Appeal noted that the intervener’s insurance policies included the repair of vehicles and that it was a fact that a certain number of garages worked in cooperation with the intervener.

31 It follows, according to the Board of Appeal, that the relevant public could believe that, by purchasing the lights or reflectors for cars covered by the mark applied for, it could receive certain benefits in its car insurance policy, or that those goods had somehow been given the intervener’s ‘seal of approval’. That could make the offer of goods covered by the mark applied for more attractive in the eyes of consumers.

32 The applicant disputes the Board of Appeal’s analysis that the relevant public is likely to establish a link between, on the one hand, the sign VertiLight affixed to the lighting, lighting reflectors and vehicle headlamps covered by the mark applied for and, on the other hand, the sign VERTI covering the intervener’s insurance services, on the ground that the goods and services in question display ‘some point of contact’ since they target consumers in the automotive sector.

33 In the applicant’s view, the reasoning for the existence of a link between car insurers and the use of the goods ‘lighting and lighting reflectors, vehicle headlamps’ as spare parts in the automotive sector, by means of repair services offered by insurance companies, is not realistic and is a fiction. The applicant submits that lamps and reflectors are items of the initial sourcing market and are largely sold through distribution channels that are completely different to those of insurance services. Contact between insurance services and repair services is only possible within the framework of the settlement of claims, where the insurance company reimburses the policyholder for repair costs.

35 First of all, it is apparent from the case-law that the fact that the goods and services in question are different does not preclude a certain proximity between them (see, to that effect, judgment of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 193).

36 Article 8(5) of Regulation No 207/2009 does not require the goods and services in question to be similar, so that there could be a link between two marks at issue, registered for different services and goods. Nonetheless, the nature of the goods or services concerned, including their degree of closeness or dissimilarity, is one of the factors for assessing whether there is a link between the marks at issue (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42; see also, to that effect, judgment of 29 October 2015, Éditions Quo Vadis v OHIM – Gómez Hernández (‘QUO VADIS’), T‑517/13, not published, EU:T:2015:816, paragraph 26 and the case-law cited).

37 Furthermore, it is apparent from the Court’s settled case-law that, even if the relevant section of the public as regards the goods or services for which the marks at issue are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Accordingly, the nature of the goods or services for which the marks at issue were registered must be taken into consideration for the purpose of assessing whether there is a link between those marks (judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 49 and 50, and of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 53).

38 In the present case, it must be stated that, on account of their very nature, their purpose, their method of use and their distribution channels, the goods ‘lighting and lighting reflectors, vehicle headlamps’ covered by the mark applied for differ from the ‘insurance’ services covered by the earlier mark. While the former are used for or to enhance vehicle lighting, the latter refer to the provision of an insurance policy to a legal or natural person.

39 The goods and services in question are, moreover, neither complementary nor in competition with each other and are not offered at the same points of sale. Goods such as those covered by the mark applied for will not be sold in connection with the provision of services such as those covered by the earlier mark. They do not therefore belong either to the same market or to related markets.

40 Even assuming that the ‘vehicle headlamps’ covered by the mark applied for are intended for cars or are sold to the public at large, it is not in any event established that the relevant public might believe that, by purchasing those goods, it could receive certain benefits in its car insurance policy, or that those goods are recommended by the insurer.

41 Accordingly, in order to assess whether there is a link between the marks at issue, it must be noted that the goods and services at issue are different in nature, that they are not similar and that, contrary to the Board of Appeal’s finding, they display no points of contact.

42 In paragraph 42 of the contested decision, the Board of Appeal stated that the ‘insurance’ services in respect of which the earlier mark enjoys a reputation are aimed at the public at large. It added that, given the nature and characteristics of those services, consumers ought to display a level of attention which may vary from average to higher than average. The Board of Appeal assumed that some consumers were likely to be attentive when they entered into an insurance contract, but took into account the fact that, where two relevant sections of public overlapped, the section of the public with the lower level of attention must be taken into consideration.

43 As regards the goods covered by the mark applied for, the Board of Appeal considered that the relevant public consisted primarily of average consumers belonging to the public at large and displaying an average level of attention.

44 The Board of Appeal concluded that the relevant public comprised average consumers belonging to the public at large and displaying an average level of attention.

45 In that regard, as stated in paragraph 19 above, where it is called upon to assess the legality of a decision of the Board of Appeal of EUIPO, the Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings the legality of which is being challenged before it (judgments of 28 January 2015, BSH v OHIM – Arçelik (AquaPerfect), T‑123/14, not published, EU:T:2015:52, paragraphs 21 to 23, and of 7 October 2015, CBM v OHIM – Aeronautica Militare (TRECOLORE), T‑365/14, not published, EU:T:2015:763, paragraphs 32 to 35). Since the applicant disputes the application of Article 8(5) of Regulation No 207/2009, the issue of the relevant public is part of the findings the legality of which is being challenged before the General Court.

46 As regards the relevant public to be taken into consideration, it should be pointed out that it will vary according to the type of injury alleged by the proprietor of the earlier mark (judgment of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraph 46).

47 In the present case, the injury at issue found by the Board of Appeal concerns the unfair advantage taken of the reputation of the earlier mark.

48 In such a case, in so far as what is prohibited is the drawing of benefit from the earlier mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is applied for, who are reasonably well informed and reasonably observant and circumspect (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 36).

49 In that regard, it is settled case-law that ‘average consumer’ cannot be understood as only the consumer who is part of the ‘general public’, but the consumer who is part of the public specifically targeted by the goods and services in question. Thus, the ‘average consumer’ may be a professional whose degree of specialisation is high, if the goods and services in question are aimed specifically at such a public, even if it is conceivable that those goods and services are also, on occasion, purchased by uninformed consumers who are part of the general public (see judgment of 8 July 2020, Teva Pharmaceutical Industries v EUIPO (Weniger Migräne. Mehr vom Leben.), T‑697/19, not published, EU:T:2020:330, paragraph 19 and the case-law cited).

50 As regards the mark applied for, contrary to the assessment made by the Board of Appeal in paragraph 43 of the contested decision, the goods ‘lighting and lighting reflectors, vehicle headlamps’ in Class 11 must be regarded as being aimed primarily at professionals with a high level of attention. Even taking into consideration that they may also be purchased by consumers who are part of the public at large, it should be noted that, given the nature of those goods, those consumers will also have a high level of attention. Those goods are not everyday consumer goods or goods that would be purchased regularly, but spare parts that are used in order for vehicle lighting to function or be enhanced, that is to say, they are goods that are generally technically complex and expensive. Since those goods are intended to be used with such goods, the relevant public will pay particular attention to them when making their purchase (see, by analogy, judgment of 12 July 2019, MAN Truck & Bus v EUIPO – Halla Holdings (MANDO), T‑698/17, not published, EU:T:2019:524, paragraph 42).

51 Consequently, the Board of Appeal erred in limiting its analysis to the public at large with an average level of attention.

52 The applicant submits that the evidence adduced by the intervener does not demonstrate the reputation of the earlier mark, even when that evidence is considered as a whole.

53 In that regard, it claims that the Board of Appeal incorrectly segmented the relevant market into a market for direct insurance, on the one hand, and a market for ‘traditional’ insurance companies, on the other. It adds that the Board of Appeal relied on evidence that lacks substantive information or has no evidential value and failed to examine the turnover, the market share or the number of transactions concluded by the intervener in relation to the whole of the Spanish market for insurance services, and that the duration of use of the earlier mark from 2011 to 2016 is too short realistically to establish a mark in the Spanish insurance market.

55 According to settled case-law, although it is true that the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods or services for which it has been registered. The messages which are conveyed inter alia by 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 (judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35, and 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 20).

56 In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (see, by analogy, judgments of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 31, and of 13 December 2004, El Corte Inglés v OHIM – Pucci (EMILIO PUCCI), T‑8/03, EU:T:2004:358, paragraph 67).

57 In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it, without there being any requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see judgment of 9 March 2012, Ella Valley Vineyards v OHIM – HFP (ELLA VALLEY VINEYARDS), T‑32/10, EU:T:2012:118, paragraph 31 and the case-law cited).

58 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 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 30 and the case-law cited).

59 Accordingly, an overall assessment of the evidence adduced by the proprietor of the mark should be carried out in order to establish whether that mark is widely 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). It cannot be ruled out that 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 9 December 2010, Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 106 and the case-law cited).

60 In the present case, first of all, as regards the segment of the insurance market in which the intervener operates, the General Court notes that, although the market share of 0.77% mentioned in Exhibit 12 corresponds to that held by the intervener in the direct insurance sector, it is apparent from that document that that sector is a sector in which the majority of players have a market share of less than 1% and that, in 2015, the intervener was ranked 20th out of 44 with growth of 22.87%, which shows that the insurance services offered under the earlier mark enjoy a certain reputation.

61 Next, the applicant’s argument relating to a general prohibition of the segmentation of the market should be rejected. It is apparent from paragraph 27 of the judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE) (T‑60/10, not published, EU:T:2012:348), cited by the applicant, that, in that case, the General Court dealt with the question of whether there was a link between the marks at issue, noting that, for the purposes of examining that question, the degree of the earlier mark’s distinctive character was to be taken into consideration. However, it took no view whatsoever on the segmentation of the market, since a general prohibition thereof is not apparent from the case-law of the General Court.

62 Furthermore, it should be noted that the Board of Appeal relied on the following evidence for the purpose of assessing the reputation of the earlier mark:

– Exhibit 1: Two decisions, translated into English, issued on 23 November 2016 and 12 May 2017, respectively, by the first and second instance of the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office; ‘the OEPM’), concluding that there was a likelihood of confusion between the earlier mark and a Spanish mark applied for subsequently;

– Exhibit 3: A declaration signed by an authorised officer of the intervener, translated into English, stating, in essence, that the earlier mark is owned by the intervener, which has been active in the Spanish insurance sector since January 2011, has almost 300,000 customers and had a turnover of EUR 79 600 000 at the end of 2016, and that, according to an official IOPE report on well-known character, the earlier mark is the fourth best-known mark in the sector and one of the major players in direct online and telephone sales of insurance in Spain;

– Exhibit 8: Articles of the Spanish press, some of the titles of which had been translated into English, highlighting, in particular, various marketing awards and recognitions awarded to the intervener in respect of the earlier mark;

– Exhibit 13: Extracts from a study carried out by Kantar TNS, the titles of which had been translated into English, tracking the evolution of the reputation of marks in the financial entity sector using advertising media parameters. The earlier mark was ranked 19th (in 2011), 10th (in 2012) and 11th (in 2013, 2014 and 2015) out of a total of around 400 marks owned by financial entities;

– Exhibit 15: Documents dated 2010, 2011, 2012, 2013, 2014, 2015 and 2016, which had been partially translated into English, consisting of press releases issued by the intervener, and press articles published on websites relating to the economy or in local daily newspapers.

63 As regards the first and second-instance decisions handed down by the OEPM, it is apparent from the material in the file that, as the applicant rightly submits, the OEPM only decided on whether there was a likelihood of confusion on the part of the public as regards the earlier mark and a Spanish mark applied for subsequently. The first instance of the OEPM thus stated that ‘Article 8[(1)] of the Spanish Trademark Law (Ley de Marcas) [was] also held to be applicable in view of the well-known character of the opponent in Spain, although the reputed character of the opponent’s marks, which was claimed in [the context of] the opposition [proceedings], is not accepted’. It is apparent from that conclusion that the OEPM did not decide on the reputation of the earlier mark, within the meaning of the Spanish Trademark Law.

64 However, as the intervener rightly points out, at the time when the decisions of the OEPM were adopted, Article 8(2) and (3) of the Spanish Trademark Law was worded as follows:

‘2. For the purposes of this Law, a well-known mark or trade name shall mean one which, as a result of its sales volume, the duration, intensity or geographical scope of its use, the value or prestige acquired in the market or for any other reason, is generally known to the section of the public for which the goods, services or activities that distinguish that mark or trade name are intended. Where all the requirements provided for in paragraph 1 are satisfied, the greater the extent to which the well-known mark or trade name is known in the relevant section of the public or in other related sections, the more dissimilar in nature may be the goods, services or activities to which the protection afforded shall extend.

3. Where the mark or trade name is known to the public at large, it shall be deemed to be widely known and the scope of the protection shall extend to all kinds of goods, services or activities’.

65 Furthermore, section IV of the explanatory memorandum to that law, in its consolidated version of 2018, draws attention to the strengthening of the protection for well-known or widely known marks and states that the Spanish Trademark Law ‘defines, for the first time in [the Spanish] legal system, the concept of a well-known or widely known mark and lays down the scope of the protection afforded to the latter’. In addition, according to section IV, ‘a well-known mark is known to the public for which its goods and services are intended and, if it is registered, it enjoys protection above and beyond the principle of specialisation, determined by the extent to which it is known; if it is not registered, its proprietor is entitled not only to bring an action for a declaration of invalidity, as hitherto, but also to file a notice of opposition by administrative means’. Lastly, ‘where a mark is generally known to the public, it shall be considered to be widely known and the scope of its protection shall extend to all kinds of goods or services’ and ‘the same protection shall be afforded to the well-known or widely known registered trade name’.

66 However, it is apparent from the case-law cited in paragraph 56 above that, in order to satisfy the requirement of reputation within the meaning of EU law, an earlier mark must be known to a significant part of the public concerned by the goods or services covered by that mark. Reputation, within the meaning of EU law, does not therefore require that the earlier mark be known to the public in general. That requirement is therefore similar to the requirement for a mark to be recognised as well known, within the meaning of the Spanish Trade Mark Law in the version applicable at the time when the decisions of the OEPM were adopted, a requirement which is, moreover, still reflected in the explanatory memorandum to the consolidated version of that law.

67 Accordingly, it should be noted that, although the OEPM decided on whether there was a likelihood of confusion on the part of the public as regards the earlier mark and a Spanish mark applied for subsequently, it also took the view that the earlier mark was generally known to the public concerned by the services covered by that mark.

68 As regards the declaration filed as Exhibit 3, it should be borne in mind that it is apparent from the case-law that a declaration drawn up in the interests of its author, such as that at issue in the present case, must, in order to have evidential value, be corroborated by other evidence (see, to that effect, judgments of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 57, and of 13 January 2011, Park v OHIM – Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 68).

69 In that regard, the General Court has already held that, in order to assess the evidential value of documents in the file, it was necessary to have regard first and foremost to the credibility of the account that was contained therein. The Court further stated that it was then necessary to take account of the person from whom the document originated, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appeared sound and reliable (judgments of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 42, and of 16 November 2011, Dorma v OHIM – Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), T‑500/10, not published, EU:T:2011:679, paragraph 49).

70 Although the statements contained in the declaration filed as Exhibit 3 are supported by other documents, those documents also originate from the intervener. Thus, the number of customers of the services marketed under the earlier mark is mentioned again only in Exhibit 2, consisting of a copy of a page on the earlier mark’s website; the turnover of approximately EUR 79 million is set out only in Exhibit 4, consisting of a simple table prepared by the intervener; and the IOPE report on well-known character referred to, according to which the earlier mark is the fourth best-known mark in the direct insurance sector, is not part of the file.

71 Accordingly, it must be stated that the information in question is not corroborated by any objective evidence, so that the Board of Appeal erred in considering that the declaration contained in Exhibit 3 was reliable.

72 As regards the articles of the Spanish press contained in Exhibits 8 and 15, even disregarding the press releases originating exclusively from the intervener, the actual publication of which has not, moreover, been demonstrated, the Court notes, as did the Board of Appeal in paragraphs 30 and 31 of the contested decision, that they set out, respectively, first, the awards and recognitions awarded to the intervener in respect of the earlier mark on account of, in particular, its customer service (article dated 2013), its innovations in the insurance sector (article dated 2014), its business performance (articles dated 2011, 2012 and 2013), its website, voted website of the year in the insurance sector in 2015, and its activities for combating fraud in the insurance sector and, secondly, information on the creation of the earlier mark, the services provided and their success.

73 That evidence must be regarded as being capable of demonstrating the efforts and investments made by the intervener to promote the image of quality, customer focus and innovation of the earlier mark. Although there is nothing to indicate that the awards and recognitions in question were given by public and official authorities and even if they originated in investment and marketing efforts, which would significantly reduce their evidential value, it must be acknowledged that they were the subject of publications in national journals and that, consequently, their media coverage must be regarded as certain.

74 Even though certain websites and certain pamphlets are addressed to a professional public in the insurance sector, such as ecommerce-news, Inese, Grupo Aseguranza and Unespa, other articles originate in the general press, such as Prnoticias, La Verdad, ABC, El Mundo and El Pais, from popular magazines, such as Autobild.es, and from popular business journals and newspapers, such as el Economista, Cinco Dias and Expansion, so that those articles are capable of showing that the earlier mark was known to the relevant public.

75 As regards the extracts from the study contained in Exhibit 13, they provide information on the amount of the advertising budget spent, inter alia, by the intervener in respect of the earlier mark for the years 2011 to 2015 and its ranking in relation to the expenditure incurred by other financial entities. That evidence demonstrates the sizeable advertising and promotion efforts made by the intervener in respect of the earlier mark over a period of five years.

76 The intervener thus proved that the numerous marketing and innovation investments and efforts for the purpose of promoting the earlier mark had been noticed by the relevant public.

77 In addition to the evidence referred to in paragraphs 72 to 75 above, it is apparent from the file that the intervener provided documents relating, inter alia, to several sporting and cultural events that it sponsored in the name of the earlier mark and extracts from websites relating to advertising campaigns carried out on certain social media platforms. Since that advertising was carried out in mass media and in mass audience programmes, the earlier mark was able to reach a significant part of the relevant public.

78 Lastly, it is apparent from all the evidence adduced by the intervener that the earlier mark, which was registered on 22 October 2010, was used intensively over the period from 2011 to 2016. That period coincides with the publication of numerous articles and the receipt of awards and recognitions in respect of the services offered under that mark, demonstrating that that mark benefited immediately and over a sustained period from media coverage in respect of the relevant public on the insurance market.

79 In that regard, it should be borne in mind that the reputation of an earlier mark must be established as at the filing date of the application for the contested mark. Contrary to what the applicant appears to argue, it is not required for proof of the reputation to be adduced over a long period (see judgment of 26 June 2019, Balani Balani and Others v EUIPO – Play Hawkers (HAWKERS), T‑651/18, not published, EU:T:2019:444, paragraphs 18 and 19 and the case-law cited). The intervener must only demonstrate that the earlier mark had acquired a reputation as at the filing date of the application for registration of the mark applied for, in the present case 13 December 2016.

80 It follows that, notwithstanding the error made by the Board of Appeal with regard to the reliability of the declaration contained in Exhibit 3, the Board of Appeal was correct to consider, in paragraph 36 of the contested decision, that the evidence, taken as a whole, made it possible to establish that the earlier mark enjoyed a certain degree of repute in Spain for the insurance services in Class 36.

81 Accordingly, the applicant’s argument alleging an incorrect assessment of the evidence relating to the reputation of the earlier mark must be rejected.

Global assessment of whether there is a link between the marks at issue in the mind of the relevant public

82 In paragraphs 77 and 78 of the contested decision, the Board of Appeal considered that all the relevant circumstances of the case sufficed to conclude that the relevant public, or at least a non-negligible part of it, would establish a link between the marks at issue. In particular, according to the Board of Appeal, the fact that the earlier mark consists of an invented word and that the mark applied for reproduces it verbatim, by simply adding a descriptive word after it, is a crucial factor in creating a link in the mind of the relevant public. This is compounded by the fact that the marks at issue both target customers in the automotive sector.

83 The applicant submits that the Board of Appeal erred in concluding that there was a high degree of similarity between the marks at issue, considered as a whole. In the applicant’s view, those marks were, at best, in particular in view of the non-descriptive character of the word ‘light’ in the mark applied for, similar to a low degree. The applicant also submits that the Board of Appeal did not compare all the goods in Class 11 covered by the mark applied for with the services in Class 36 covered by the earlier mark, but only a part of those goods and services, which, moreover, did not necessarily exclusively target the automotive sector. The applicant claims that, in view of the foregoing, and of the fact that the degree of repute of the earlier mark could not be regarded as high, the Board of Appeal erred in concluding that there was a link between the marks at issue in the mind of the relevant public.

85 As noted in paragraph 26 above, the existence of a link between the marks at issue in the mind of the relevant public must be assessed globally, in particular in the light of the degree of similarity between the marks at issue; the nature of the goods or services for which they were registered, 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; and the existence of a likelihood of confusion on the part of the public.

86 In the present case, the Board of Appeal found that the distinctive character of the earlier mark was average, which the parties have not, moreover, disputed.

87 Next, as regards the distinctive character of the mark applied for, it must be noted that it consists of the element ‘vertilight’. However, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word mark, he will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46). The relevant public will therefore break the mark applied for down into two elements, namely ‘verti’ and ‘light’.

88 First, the element ‘light’ in the mark applied for is part of basic English vocabulary and is likely to be understood by the relevant public even if it is not English-speaking and has only a rudimentary knowledge of English. That word is internationally recognised as referring to the concept of ‘light’ (see, to that effect, judgments of 10 October 2008, Imperial Chemical Industries v OHIM (LIGHT & SPACE), T‑224/07, not published, EU:T:2008:428, paragraphs 24 to 26, and of 27 September 2018, Carbon System Verwaltungs v EUIPO (LIGHTBOUNCE), T‑825/17, not published, EU:T:2018:615, paragraph 33). Furthermore, as the Board of Appeal rightly notes, throughout the European Union the expression ‘light’ is often used in trade to refer to, inter alia, something which is not heavy.

89 For the relevant public, which will associate the word ‘light’ with the noun ‘light’, that element is therefore descriptive of the goods ‘lighting and lighting reflectors, vehicle headlamps’ in Class 11 covered by the mark applied for.

90 Secondly, it should be noted that it is apparent from the written observations of the parties that they do not dispute that the element ‘verti’ has no meaning for the relevant public. At the hearing, the applicant submitted, however, that the element ‘verti’ in the mark applied for was evocative, as an abbreviation, of the concept of verticality, which was disputed by EUIPO. In any event, it must be stated that, in view of the descriptive character of the element ‘light’, the element ‘verti’ forms the most distinctive part of the mark applied for and must be considered to have some distinctiveness.

91 Lastly, as regards the visual comparison of the marks at issue, they coincide in the presence of the common element ‘verti’, composed of five identical letters placed in the same order. The visual difference between those marks is due to the presence, in the mark applied for, of five additional letters comprising the element ‘light’, which follows the element ‘verti’. The marks at issue are therefore visually similar to an average degree.

92 As regards the phonetic comparison, it must be stated that the word element ‘verti’, common to the marks at issue, will be pronounced in the same way by the relevant public. The presence of the additional element ‘light’ in the mark applied for is not capable of ruling out any phonetic similarity between those marks, so that the Board of Appeal also did not err in concluding that they were phonetically similar to an average degree.

93 As regards the conceptual comparison, it should be noted that the parties do not dispute the analysis of the Board of Appeal that the marks at issue are dissimilar.

94 In light of the foregoing considerations, it must be concluded that the marks at issue, each taken as a whole, are visually and phonetically similar to an average degree. In so far as they differ conceptually, the degree of similarity between those marks, considered as a whole, can at best only be average and not ‘high’, contrary to the finding of the Board of Appeal in paragraph 66 of the contested decision.

95 However, even though a lesser degree of similarity does not in itself allow Article 8(5) of Regulation No 207/2009 to be disapplied (see, to that effect, judgment of 20 November 2014, Intra-Presse v Golden Balls, C‑581/13 P and C‑582/13 P, not published, EU:C:2014:2387, paragraphs 72 to 77), the Court has also held that the fact that two marks are identical, and even more so if they are merely similar, is also not sufficient, in itself, for it to be concluded that there is a link between those marks (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 51 and the case-law cited).

96 Furthermore, as is apparent from the case-law cited in paragraph 26 above, the similarity of the marks at issue represents only one of the factors to be taken into consideration for the purposes of establishing any link that could be created in the mind of the relevant public.

97 The Board of Appeal therefore erred in concluding, in paragraph 78 of the contested decision, that the fact that the earlier mark consists of an invented word and that the mark applied for reproduces it verbatim, by simply adding a descriptive word after it, was a crucial factor in creating a link in the mind of the relevant public, within the meaning of Article 8(5) of Regulation No 207/2009.

98 Furthermore, although it is apparent from paragraphs 80 and 81 above that the Board of Appeal did not err in considering that the earlier mark had a certain reputation on Spanish territory for the ‘insurance’ services in Class 36, it should be noted that the assessment of the link in the mind of the relevant public between the marks at issue is likely to vary according to the strength of the reputation and the distinctive character of the earlier mark (see, to that effect, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69 and the case-law cited; of 9 September 2016, Puma v EUIPO – Gemma Group (Representation of a bounding feline), T‑159/15, EU:T:2016:457, paragraph 42; and of 4 October 2017, GAPPOL, T‑411/15, not published, EU:T:2017:689, paragraph 197 and the case-law cited).

99 In the present case, as stated in paragraph 86 above, the distinctive character of the earlier mark may be regarded as average and, although the earlier mark enjoys a certain reputation, no evidence has been adduced that is capable of supporting the fact that it would have acquired such a reputation that that reputation goes beyond the public concerned by the services for which it was registered. Furthermore, the intervener has not contended that the degree of repute of the earlier mark was higher than the degree of repute accepted by the Board of Appeal.

100 In addition, it must be borne in mind that, although the Board of Appeal examined the possibility that the relevant public may establish a link between the marks at issue, it based its analysis on an incorrect assessment of the degree of closeness between the goods and services at issue, of the level of attention of that public and of the degree of similarity between the marks at issue.

101 It follows that, in the context of an average degree of repute of the earlier mark and having regard to the average degree of similarity between the marks at issue, the different nature of the goods and services at issue, the high level of attention of the public targeted by the mark applied for and the average distinctiveness of the earlier mark, it cannot be concluded that the relevant public would establish a link between the marks at issue, in accordance with the case-law referred to in paragraphs 26 and 85 above.

102 In the absence of such a link, 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 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 31; order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 27; and judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 64).

103 Since the existence of such a link is an essential condition for the application of Article 8(5) of Regulation No 207/2009, the Board of Appeal erred in concluding that there was a risk that the mark applied for would take unfair advantage of the repute of the earlier mark, such that the first plea must be upheld.

104 Furthermore, in light of all the foregoing considerations, it must be held that the statement of reasons for the contested decision disclosed in a clear and unequivocal fashion the reasoning followed by the Board of Appeal and enabled the applicant to ascertain the reasons for the measure adopted in order to defend its rights, on the one hand, and the European Union judicature to review the legality of the contested decision, on the other. Accordingly, contrary to what the applicant submits, the statement of reasons for that decision is consistent with Article 94 of Regulation 2017/1001 and the second plea must be rejected.

105 In those circumstances, and without it being necessary to examine the third plea raised by the applicant, the action must be upheld and the contested decision annulled.

106 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

107 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter.

108 In addition, under Article 138(3) of the Rules of Procedure, the Court may order an intervener to bear its own costs. The intervener which intervened in support of EUIPO is to bear its own costs.

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 July 2019 (Case R 1849/2018‑5);

2. Orders EUIPO to bear its own costs and to pay those incurred by Linde Material Handling GmbH;

3. Orders Verti Aseguradora, Compañía de seguros y reaseguros, SA, to bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Linde Material Handling v EUIPO - Verti Aseguradora (VertiLight) (EU trade mark - Judgment) [2021] EUECJ T-644/19 (28 April 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T64419.html Cite as: EU:T:2021:222, [2021] EUECJ T-644/19, ECLI:EU:T:2021:222

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