OPINION OF ADVOCATE GENERAL
HOGAN
delivered on 26 June 2019(1)
Joined Cases C‑155/18 P to C‑158/18 P
Tulliallan Burlington Ltd
v
European Union Intellectual Property Office (EUIPO)
(Appeal — EU trade mark — Opposition proceedings — International registration designating the European Union — Word marks and figurative marks containing the verbal element ‘BURLINGTON’ — Earlier national word marks BURLINGTON and BURLINGTON ARCADE — Earlier EU and national figurative marks BURLINGTON ARCADE — Article 8(5) of Regulation (EC) No 207/2009 — Unfair advantage taken of, or detriment to, the distinctive character or the repute of the earlier trade marks — Article 8(1)(b) of Regulation No 207/2009 — Likelihood of confusion)
1. The appellant in these proceedings, Tulliallan Burlington Ltd (‘Tulliallan’) is the proprietor of a high class shopping arcade in central London. The various shops and boutiques in the arcade specialise in the sale of luxury goods such as jewellery, leather goods, clothing and fragrances. It is the registered owner in the United Kingdom of the word marks BURLINGTON (2) and BURLINGTON ARCADE (3) and the registered owner in the United Kingdom of a figurative mark containing the words ‘Burlington Arcade’. (4) Tulliallan is also the registered owner of an EU figurative mark containing the words ‘Burlington Arcade’. (5)
2. Tulliallan objects to the application brought by a German company, Burlington Fashion GmbH (‘BF’), for the registration of three separate EU figurative marks using the word ‘Burlington’ and the EU word mark BURLINGTON. (6) If granted, BF proposes to use these marks in connection with the sale, inter alia, of soaps, jewellery and leather bags. It claims that the use of the four EU trade marks, all of which contain the word ‘Burlington’, is liable, inter alia, to cause confusion in the minds of the relevant public and to dilute the reputation of its earlier trade marks for the purposes of both Article 8(1) and Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark. (7) These are the principal issues which now arise in these appeals from the judgments of the General Court (8). Before turning to these questions, it is, however, first necessary to set out the legal context, the rather complex history of these proceedings and to describe the facts of the case in more detail.
I. Legal context
3. Article 8(1) and (5) of Regulation No 207/2009 is worded as follows:
‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
...
(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
…
5. Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, 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 repute of the earlier trade mark.’
II. Background to the disputes
4. On 12 November 2009, BF filed an application for protection in the European Union of international registration No 1017273 with the European Union Intellectual Property Office (EUIPO). The registration for which the protection was applied for is the figurative mark represented below:
5. On 13 August 2009, BF filed an application for protection in the European Union of international registration No 1007952 with EUIPO. The registration for which the protection was applied for is the figurative mark represented below:
6. On 20 November 2008, BF filed an application for protection in the European Union of international registration No 982021 with EUIPO. The registration for which the protection was applied for is the figurative mark represented below:
7. On 20 November 2008, BF filed an application for protection in the European Union of international registration No 982020 with EUIPO. The registration for which the protection was applied for is the word mark BURLINGTON. The four marks in question are hereinafter referred to as the ‘contested trade marks’.
8. The goods in respect of which the protection was applied for are in Classes 3, 14, 18 and 25 and correspond, for each of those classes, to the following description:
Class 3: ‘Soaps for cosmetic purposes, soaps for textiles, perfumery, ethereal oils, cosmetic preparations for cleaning, caring for and embellishing the skin, the scalp and the hair; toilet articles, included in this class, deodorants for personal use, pre shave and after shave preparations’;
Class 14: ‘Jewellery, watches’;
Class 18: ‘Leather and imitations of leather, namely suitcases, bags (included in this class); small leather articles (included in this class), especially purses, wallets, key cases; umbrellas and sunshades in the nature of parasols’;
Class 25: ‘Footwear, clothing, headgear, belts’.
9. On 12 August 2009, 17 May 2010 and 16 August 2010, Tulliallan filed notices of opposition pursuant to Article 41 of Regulation No 207/2009 to the registration of the contested trade marks in respect of the goods in Classes 3, 14 and 18.
10. The opposition was based, inter alia, on the following earlier trade marks and rights:
– the word mark BURLINGTON, registered in the United Kingdom under No 2314342 on 5 December 2003 and duly renewed on 29 October 2012, designating services in Classes 35 and 36 and corresponding, for each of those classes, to the following description:
– Class 35: ‘Rental and leasing of advertising space; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial purposes; advertising and promotion services and information services relating thereto; the bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from general merchandise retail stores’;
– Class 36: ‘Rental of shops and offices; leasing of, or management of real estate; leasing of, or space between or within, buildings; real estate management services; information services relating to the rental of shops and offices; real estate services; fund investments; mutual funds’;
– the word mark BURLINGTON ARCADE, registered in the United Kingdom under No 2314343 on 7 November 2003 and duly renewed on 29 October 2012, designating services in Classes 35, 36 and 41 and corresponding, for Class 41, to the following description: ‘Entertainment services; organisation of competitions; organisation of exhibitions; provision of recreation information; presentation of live performances; provision of sports facilities; provision of live music and live entertainment; provision of facilities for live band performances; provision of live entertainment; provision of live music; provision of live musical performances; provision of live shows’:
– the figurative mark reproduced below and registered in the United Kingdom under No 2330341 on 7 November 2003 and duly renewed on 25 April 2013, designating services in Classes 35, 36 and 41:
– EU figurative mark No 3618857 reproduced below, registered on 16 October 2006 and limited, as a result of cancellation proceedings No 8715 C, to the services in Classes 35, 36 and 41 corresponding, for each of those classes, to the following description: ‘Advertising and promotion services and information services relating thereto; the bringing together for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from a range of general merchandise retail stores’ (Class 35); ‘Rental of shops; leasing of, or management of real estate; leasing of, or space between or within, buildings; real estate management services; information services relating to the rental of shops’ (Class 36); and ‘Entertainment services; provision of live entertainment’ (Class 41):
11. The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.
12. On 10 July 2013, 8 October 2013, 8 November 2013 and 22 November 2013, the Opposition Division, after examining Tulliallan’s opposition on the basis of EU figurative mark No 3618857, upheld that opposition for the goods in Classes 3, 14 and 18, and therefore ordered BF to pay the costs.
13. On 20 August 2013, 3 December 2013, 11 December 2013 and 2 January 2014, BF filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decisions.
14. By the contested decisions, the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decisions, ordering Tulliallan to bear the costs of the opposition proceedings and the appeal proceedings.
15. In the contested decisions, the Board of Appeal, found:
– Firstly, that as regards the application of Article 8(5) of Regulation No 207/2009, the reputation of the earlier marks had been proven in the relevant territory for the services in Classes 35 and 36, with the exception, however, of the service of ‘bringing together for the benefit of others, a variety of goods, enabling customers to conveniently ... purchase those goods from a range of general merchandise retail stores’, in Class 35;
– Secondly, as regards the ground referred to in Article 8(4) of that regulation, the Board of Appeal found, in essence, that the applicant (Tulliallan) had not demonstrated that the prerequisites for establishing misrepresentation and damage vis-à-vis the target public had in the present case been met;
– Thirdly, as regards Article 8(1)(b) of that regulation, it found, in essence, that the goods and services at issue were dissimilar and that a likelihood of confusion was ruled out, irrespective moreover of the similarity of the marks concerned.
III. The procedure before the General Court and the judgments under appeal
16. By applications lodged at the Registry of the General Court on 22 March 2016, Tulliallan brought four annulment actions registered under the numbers T‑120/16, T‑121/16, T‑122/16 and T‑123/16 against the contested decisions.
17. In support of its actions for annulment, Tulliallan relied on three pleas in law. In essence, the first plea in law alleged an infringement of Article 8(5) of Regulation No 207/2009, a procedural defect and an infringement of the procedural rules, the second plea in law alleged an infringement of the obligation to state reasons, an infringement of the right to be heard and an infringement of Article 8(4) of that regulation, and the third plea in law alleged an infringement of Article 8(1)(b) of that regulation.
18. In the judgments under appeal, which have identical outcomes and reasoning, the General Court dismissed the three pleas in law raised by Tulliallan.
19. With regard to the first plea, at paragraph 28 of the judgments under appeal the General Court noted that the Board of Appeal considered that the reputation of Tulliallan’s earlier trade marks had not been proven as regards the retail service in Class 35. The General Court found however that the Board of Appeal’s conclusion could not be endorsed.
20. According to the General Court, the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), did not support the assertion that shopping arcades or shopping centres are, by definition, excluded from the scope of the concept of retail service defined in Class 35. The General Court found that paragraph 34 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), precludes EUIPO’s argument that shopping arcade services are essentially limited to rental and real estate management services and that, consequently, the customers to which those services are addressed are principally those persons interested in occupying the shops or offices in that arcade. The General Court found that having regard to the wording of Class 35, the concept of retail service, as interpreted by the Court of Justice in paragraph 34 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), also includes a shopping arcade’s services in relation to sales. (9) That court thus found that the strict interpretation of the concept of retail trade used by the Board of Appeal was erroneous and that Tulliallan could, consequently, rely on the protection of the earlier trade marks’ reputation for services in Class 35.
21. The General Court found at paragraph 43 of the judgments under appeal that, in the light of the case-law of the Court in relation to Article 8(5) of Regulation No 207/2009, Tulliallan had not submitted to the Board of Appeal or the General Court consistent evidence from which it could be concluded that the use of the marks applied for took unfair advantage of the distinctive character or the repute of the earlier trade marks. The General Court also found that despite the fact that Tulliallan stressed the ‘near uniqueness’ of its earlier trade marks and their ‘significant and exclusive’ reputation, it had not provided specific evidence capable of substantiating the fact that the use of the contested trade marks would make its earlier marks less attractive. (10)
22. At paragraph 45 of the judgments under appeal the General Court found that the ‘fact that another economic agent may be authorised to use a mark including the word “burlington”, for goods similar to those on sale in the applicant’s London arcade, is not such in itself as to affect, in the eyes of the average consumer, the commercial attractiveness of that place. As the Court of Justice made clear in the [judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425)], such a characteristic is closely connected with the “variety of [commercial] services” performed by the tenants of the shops in that arcade, not solely with the arcade’s name, which is the same moreover — as the Board of Appeal correctly noted in the contested decision — as the names of other also very well-known places near that arcade, such as Burlington Gardens or Burlington House’.
23. The General Court found, as regards the procedural defect allegedly vitiating the contested decisions, that Tulliallan’s observations were taken into account by the relevant EUIPO adjudicating bodies, and must, therefore, be rejected as unfounded.
24. As regards the second plea, the General Court rejected Tulliallan’s claim that the Board of Appeal provided no reasons for rejecting its argument alleging infringement of Article 8(4) of Regulation No 207/2009. In addition, the General Court found that during the proceedings before the Opposition Division, Tulliallan, as opponent, while pleading the infringement of Article 8(4) of Regulation No 207/2009, did not supply the factual or legal material necessary to prove that the conditions relating to the application of that provision were duly met. That court also found that, before the Board of Appeal, Tulliallan simply stated that it ‘maintained its arguments [submitted before the Opposition Division]’, without substantiating further, either in fact or in law, those arguments. The General Court found at paragraph 62 of the judgments under appeal that the Board of Appeal was entitled to find that Tulliallan had not demonstrated that the prerequisites for an action for passing off were duly met and thus rejected the second plea in law.
25. As regards the third plea which concerned the risk of confusion in accordance with Article 8(1)(b) of Regulation No 207/2009, the General Court held that the Board of Appeal had correctly found that Tulliallan’s services and the goods covered by the marks applied for were dissimilar. In particular, the General Court found as regards the retail service in Class 35 that in the light inter alia of paragraph 50 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, (C‑418/02, EU:C:2005:425), it was necessary for the goods offered for sale to be precisely specified. According to the General Court, the absence of any precise statement of the goods which may be sold in the various shops comprising a shopping arcade such as Burlington Arcade precludes any association between those shops and the goods covered by the contested trade marks, since the definition provided by Tulliallan in the present case relating to ‘luxury goods’ is insufficient in order to specify the goods concerned. In the absence of such a specification, the General Court held that no similarity or complementarity could be established between the services covered by the earlier trade marks and the goods covered by the marks applied for. The General Court rejected Tulliallan’s argument that, for shopping arcade services, it is not necessary to specify the goods concerned as, having regard to the wording of Class 35, the concept of retail service, as interpreted by the Court of Justice in paragraph 34 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), also includes a shopping arcade’s services in relation to sales. That court thus found that given that one of the prerequisites referred to in Article 8(1)(b) of Regulation No 207/2009 was not met, the third plea must be rejected and the action dismissed in its entirety.
A. Forms of order sought and the procedure before the Court
26. By its appeals, Tulliallan claims that the Court should:
– set aside the judgments under appeal;
– set aside the contested decisions or alternatively refer the cases back to the General Court to be decided in accordance with the judgment of the Court;
– order EUIPO and BF to pay the costs.
27. BF claims that the Court should:
– dismiss the appeals;
– order Tulliallan to pays the costs incurred by BF in connection with the proceedings before the Court of Justice, the General Court and the expenses incurred by it in connection with the proceedings before the Board of Appeal.
28. EUIPO claims that the Court should:
– annul the judgments under appeal in so far as they rejected Tulliallan’s applications based on Article 8(1)(b) of Regulation No 207/2009 and the three earlier UK marks No 2 314 342, No 2 314 343 and No 2 330 341;
– dismiss the appeals for the remainder;
– order each party to bear its own costs.
29. By decision of the President of the Court of 12 June 2018, Cases C‑155/18 P, C‑156/18 P, C‑157/18 P and C‑158/18 P were joined for the purposes of the oral procedure and the judgment.
30. Written observations were submitted by Tulliallan, BF and EUIPO. Tulliallan, BF and EUIPO appeared at the hearing before the Court on 10 April 2019.
IV. The appeals
31. In support of its appeals, Tulliallan relies on three pleas based firstly, on an infringement of Article 8(5) of Regulation No 207/2009, secondly, on an infringement of Article 8(4) of that regulation and thirdly, on an infringement of Article 8(1)(b) of that regulation.
32. As requested by the Court, this Opinion will focus on the first and third pleas raised in the appeals.
A. First plea
33. The first plea raised by Tulliallan is divided essentially into two parts. Tulliallan claims, firstly, that the General Court infringed Article 8(5) of Regulation No 207/2009 and, secondly, that the judgments under appeal are vitiated by a procedural defect.
1. Infringement of Article 8(5) of Regulation No 207/2009
(a) Arguments of parties
34. Tulliallan notes that the General Court held at paragraphs 27 to 35 of the judgments under appeal that the Board of Appeal had erred in finding that a shopping arcade’s services were excluded from the scope of retail services under Class 35. (11)It considers that the General Court correctly identified that the reputation of its earlier marks for the provision of shopping arcade services was not restricted to a narrow class of retailers seeking arcade space, but extended to the purchasers of the goods ultimately sold by those retailers. Tulliallan notes, however, that the General Court did make one error in its characterisation of the earlier marks’ reputation when it concluded at paragraph 34 of the judgments under appeal that this reputation for shopping arcade services fell within the meaning of ‘retail services’ for the purposes of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425).
35. Tulliallan considers that it is critical in this case for the Court to appreciate that the evidence of reputation that it submitted before the Board of Appeal and the General Court made clear that it has a particularly strong reputation as an upmarket, specialist arcade focussing on luxury goods such as jewellery, leather goods and fragrances. Moreover, according to Tulliallan the evidence before the Board of Appeal and the General Court made clear that the earlier marks were ‘near unique’.
36. Having previously accepted that the earlier marks have a reputation, (12) and in the light of the evidence on the extent of that reputation, Tulliallan considers that the General Court ought to have found, on a global assessment bearing in mind the factors set out in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655, paragraph 42), that the relevant public would make a link between the earlier marks and the contested trade marks.
37. According to Tulliallan, unlike real estate management services, shopping arcade services necessitate interaction with and the targeting of the end consumers of the goods sold in the shops: the businesses of the arcade service provider and the shops in that arcade are intrinsically linked. It maintains that a prestigious arcade such as Tulliallan’s Burlington Arcade is able to attract premium rents by gathering together retailers who provide the right kinds of luxury goods and providing those retailers with support which attracts customers to the Arcade. Accordingly, it can clearly be seen that a retailer and its goods gain prestige by association with the Burlington Arcade, and conversely that the average consumer would naturally associate the earlier marks for ‘Burlington’ with the provision of those luxury retail goods, in particular goods such as jewellery, leather goods and fragrances for which on the evidence the Burlington Arcade has a particular reputation.
38. Tulliallan considers that the only conclusion open to the General Court given its own findings on reputation (and indeed the evidence on reputation before the Board of Appeal and the General Court), was that the average consumer would make a link between the earlier marks and the contested trade marks. However, the General Court failed to make any finding at all on a link, proceeding instead to deal with detriment to distinctive character and unfair advantage.
39. On the question of dilution and unfair advantage, Tulliallan considers that the General Court erred at paragraphs 36 to 44 of the judgments under appeal in finding that it had failed to provide the proof necessary to establish dilution or undue advantage.
40. Tulliallan claims that the proprietor of an earlier trade mark is not required to demonstrate actual and present injury to its trade mark for the purposes of Article 8(5) of Regulation No 207/2009. What is required is that the proprietor of the earlier mark prove that there is a serious risk that such an injury will occur in the future. (13) It considers that the General Court set the evidential bar higher than that required by the case-law.
41. First, the General Court effectively found at paragraph 45 of the judgments under appeal that use by a third party of the word ‘Burlington’ for goods similar to those on sale in Tulliallan’s Burlington Arcade would never be able to cause detriment to the distinctive character of the earlier marks because the ‘commercial attractiveness’ of the arcade was also associated with the tenants of the shops in the arcade. Tulliallan considers that this does not comply with the ruling in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), on detriment to the distinctive character of the earlier marks. In that regard, Tulliallan claims that the reputation of the trade marks of the shops in the arcade was irrelevant to the question in issue and the General Court should not have taken it into account.
42. Secondly, the General Court failed to take into account the relevant evidence that was before it and before the Board of Appeal which would have been sufficient to satisfy the requirements of the Court in the judgments of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655, paragraphs 76 and 77), and of 14 November 2013, Environmental Manufacturing v OHIM (C‑383/12 P, EU:C:2013:741, paragraph 44).
43. According to Tulliallan, the ‘Bringing Together Specification’ shopping arcade services of the earlier marks are in fact similar to the goods sold by the retailers brought together in those arcades because of the close economic connection between the services of the arcade service provider and the products being sold in the arcade. Moreover, because of the strong reputation of the earlier marks in connection with the provision of luxury goods, in particular jewellery, leather goods and fragrances, the average consumer in this instance would perceive that such goods provided by a third party were provided by or with the authority of Tulliallan. This would inevitably dilute the earlier marks as it would diminish the exclusivity of the Burlington Arcade in the minds of the average consumer and indeed amongst the narrower range of actual and potential ‘retailer’ customers of Tulliallan. Tulliallan considers that the earlier marks and the contested trade marks are confusingly similar and in such cases, by analogy with the position in relation to ‘link’ at paragraph 57 of the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), a finding of ‘unfair advantage’ ought to flow necessarily from a finding of confusing similarity.
44. BF and EUIPO consider that this plea should be rejected.
(b) Analysis
45. Article 8(5) of Regulation No 207/2009 provides that ‘… upon opposition by the proprietor of an earlier trade mark …, the trade mark applied for shall 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 repute of the earlier trade mark’.
46. The application of Article 8(5) of Regulation No 207/2009 is subject to the fulfilment of three cumulative conditions. (14) First, the signs at issue must be identical or similar. Secondly, the earlier mark cited in opposition must have a reputation. Finally, there must be a risk that the use by someone, without due cause, of the sign in respect of which registration as a trade mark is applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. (15)
47. As regards the first condition, while Article 8(1)(b) of Regulation No 207/2009 is conditional on a finding of a degree of similarity between the signs at issue which is capable of giving rise to a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood of confusion is not, by contrast, necessary as a condition for the application of paragraph 5 of that article. In that regard, the Court stated in the judgment of 10 December 2015, El Corte Inglés v OHIM (C‑603/14 P, EU:C:2015:807, paragraph 42), that Article 8(5) of Regulation No 207/2009 merely requires the similarity which exists to be capable of leading the relevant public to make a connection between the signs at issue, that is to say, to establish a link between them, but does not require that similarity to be capable of leading that public to confuse those signs.
48. Tulliallan considers that the General Court erred in failing to find that the relevant public would make a link between the earlier marks and the contested trade marks.
49. In my view, Tulliallan’s claim that the General Court failed to examine whether the relevant public would establish a link between the signs at issue is correct. Indeed, having found that the reputation of the earlier marks was not disputed (16) and that Tulliallan could rely on the protection of the earlier trade marks’ reputation for services in Class 35, (17) including a shopping arcade’s services in relation to sales, (18) the General Court merely recalled the case-law on the requirement of such a link, stated that the Board of Appeal had found in the contested decisions that there was no link between the marks at issue (19) and proceeded to examine whether the use of the marks applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.
50. While I agree with Tulliallan’s claim that the General Court failed to make any finding (20) at all on the question of a link, given that the establishment of a link between the signs at issue is merely the first of the three cumulative conditions which must be satisfied under Article 8(5) of Regulation No 207/2009, the absence of such an examination is not, in itself, sufficient to find that the General Court erred in law, provided that one of the other two conditions is not satisfied.(21) As the second of the three cumulative conditions regarding the reputation of the earlier marks was deemed to have been satisfied, (22) it is therefore necessary to examine Tulliallan’s claim that the General Court erred at paragraphs 36 to 45 of the judgments under appeal in finding that it had failed to provide the proof necessary to establish that the use of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks. (23)
51. As regards the standard of proof in relation to Article 8(5) of Regulation No 207/2009, it is settled case-law that in order to benefit from the protection introduced by that provision, the proprietor of the earlier mark is not required, for that purpose, to demonstrate actual and present injury to its mark. The proprietor of the earlier mark must, however, demonstrate that there is a serious risk that such an injury will occur in the future. (24)
52. In my view, I do not consider that Tulliallan has demonstrated that at paragraph 44 of the judgments under appeal the General Court required proof of actual and present injury to the earlier marks. It is clear from the specific reference to the criteria laid down in paragraph 43 of the judgment of 14 November 2013, Environmental Manufacturing v OHIM (C‑383/12 P, EU:C:2013:741), at paragraph 44 of the judgments under appeal that the General Court merely required proof of a serious risk of injury. (25)
53. On the question of whether the General Court failed to take into account and correctly analyse the evidence before it concerning breach of Article 8(5) of Regulation No 207/2009, it must be recalled that that court found at paragraph 27 of the judgments under appeal that Tulliallan’s earlier trade marks, which designate services in Classes 35 and 36, are known to a significant part of the public of the relevant market as being the name of a very well-known shopping arcade in the United Kingdom, located in central London, bringing together luxury boutiques within the arcade. The question which arose, however, was whether that reputation corresponds to the services in Class 35 for which the earlier trade marks were registered, so that Tulliallan could benefit from the protection of the reputation in question.
54. The General Court found at paragraph 34 of the judgments under appeal that the concept of retail service as interpreted by this Court in the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), also includes a shopping arcade’s services in relation to sales such as Tulliallan’s services in relation to the sales conducted by the arcade’s own tenants. (26) To that extent Tulliallan is entitled to assert that the use of the marks applied for could have taken unfair advantage of, or have been detrimental to, the distinctive character or repute of its earlier trade marks within the meaning of Article 8(5) of Regulation No 207/2009.
55. As the General Court correctly noted at paragraph 39 of the judgments under appeal, it is nevertheless necessary for the proprietor of the earlier trade mark(s) to demonstrate that injury thereto is foreseeable. Just as in the case of the issue of the existence of a ‘link’ between the trade marks in question, the risk of injury must, furthermore, also be assessed holistically (27), including the factors set out in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655, paragraph 42). (28)
56. These factors include the degree of similarity between the conflicting marks, the nature of the goods or services for which the conflicting marks 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. (29)
57. It might be observed that, however, in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), the word in question was an invented word which was closely associated in the public’s mind with the claimant in those proceedings, namely Intel Corporation Inc., and with the computers and computer linked goods and services it provided. By contrast the word ‘Burlington’ is not altogether an uncommon word in the English language, with different geographical and, indeed, trade designations in a variety of English speaking countries. (30) Thus, the word ‘Burlington’ appears in the name of a variety of cities and townships in both the USA and Canada. Burlington Road is a very well-known road near Dublin City Centre and, of course, the word ‘Burlington’ features in the names of other well-known places near Tulliallan’s arcade in London such as Burlington Gardens and Burlington House. (31)
58. One may nevertheless accept that the word ‘Burlington’ is a sufficiently unusual word as to call to mind a possible link on the part of the relevant section of the public between the earlier marks(s) and the mark(s) applied for even though such a class of persons is not — or, at least might not be — confused. (32)
59. Nevertheless, as the Court observed in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655, paragraphs 69 to 71), and as I have already indicated at point 50 of this Opinion, the existence of such a link is not in itself sufficient to establish a likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark. As was pointed out in paragraph 71 of the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), the existence of a link between the conflicting marks does not dispense the proprietor of the earlier trade mark from having to prove actual and present injury to its mark or a serious likelihood that such an injury will occur in the future.
60. On this critical question, I find myself agreeing with the conclusion of the General Court at paragraphs 44 and 45 of the judgments under appeal that the risk of injury has not in fact been established by Tulliallan. I reach that conclusion for the following reasons.
61. First, as the General Court observed at paragraph 45 of the judgments under appeal, the commercial attractiveness of the arcade was closely connected with the services provided by the tenants of the arcade and not solely with the arcade’s name. (33) It also noted that that name was connected to other very well-known places near the arcade such as Burlington Gardens. Thus, unlike the situation in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), where, to repeat, the word was an invented one and was closely associated in the public mind with the goods and services of the claimant company, the word ‘Burlington’ was not an invented word. As, moreover, I have already observed, it features as a place name in the United Kingdom, Ireland, the USA and Canada and the word is already in use by a variety of different manufacturers and service providers.
62. Contrary to Tulliallan’s observations, I do not consider that it is irrelevant that ‘Burlington’ was also the name of other well-known places near the Burlington arcade. Such a factor is relevant as part of a global assessment and may tend to indicate that the earlier marks are not so immediately and strongly brought to mind by the later marks, thereby reducing the likelihood that the current or future use of the later marks will take unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier marks. (34)
63. Second, as the General Court observed at paragraph 45 of the judgments under appeal, the fact that another economic agent might be authorised to use a trade mark which included the word ‘Burlington’ for goods which are similar to those which are on sale in Tulliallan’s arcade does not in itself point to a real risk of injury to the reputation of its trade marks where the commercial attractiveness of the arcade is closely connected to the reputation and standing of the tenants of the arcade and the services they provide. (35) While it may be — as I have already acknowledged — that the average consumer, upon seeing the word ‘Burlington’ in use in connection with fashion items produced by BF, might well make a link to Tulliallan’s London arcade. Yet it seems unlikely that this fact in itself would bring about a change in the economic behaviour of the average consumer of the goods or services for which the earlier marks were registered consequent on the use of the later marks. (36) Even if Tulliallan’s case is taken at its height, there is little reason to suppose that, for example, a brand-conscious London based consumer of high quality goods would be deterred from frequenting Tulliallan’s arcade simply because they happen to come across fashion items or, indeed, other goods bearing the name ‘Burlington’ in other retail outlets.
64. I therefore consider that this argument should be rejected as unfounded.
2. Procedural defect
65. Tulliallan considers that the General Court erred in law at paragraph 46 of the judgments under appeal in rejecting as unfounded its claim that the contested decisions were vitiated as the Board of Appeal had not taken into account its submissions.
66. It is sufficient here to observe that Tulliallan is in essence repeating an argument which it has already put forward before the General Court, without indicating the error of law which that court made in its response to that argument in paragraph 46 of the judgments under appeal.
67. Under the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. Pursuant to Article 169(2) of the Court’s Rules of Procedure, the pleas in law and legal arguments relied on in an appeal must identify precisely those points in the grounds of the General Court’s decision which are contested. That requirement is not satisfied by an appeal which, without even specifically identifying the error of law allegedly vitiating the judgment which is the subject of that appeal, confines itself to reproducing the pleas in law and arguments previously submitted to the General Court. (37)
68. It follows that that argument must be rejected as inadmissible.
69. I thus consider that the Court should reject the first plea as partially unfounded and partially inadmissible.
B. Third plea
1. Arguments of parties
70. By its third plea Tulliallan alleges that the General Court infringed Article 8(1)(b) of Regulation No 207/2009 concerning the risk of confusion.
71. Tulliallan notes that at paragraph 48 of the judgment of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750), the Court found that the requirement in the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), that an applicant for a trade mark in respect of ‘retail services’ must specify the goods or types of goods to which those services relate does not apply to trade marks that had been granted before the judgment in the latter case. Tulliallan considers that the judgment of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750), which is based on the principle of legal certainty, should apply equally to specifications that had been published at the date of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), or merely filed but with no requests for amendment from EUIPO (38) during the examination period following the latter judgment. According to Tulliallan, it would be inconsistent with legal certainty if applicants for registration at the time, having satisfied EUIPO’s requirements with respect to registration of their marks, were retrospectively affected by a Court decision that affected those rights between filing and grant. (39)
72. Tulliallan also claims that, in any event, the General Court erred in its analysis of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425, paragraphs 48 to 51). It considers that the scope of that case is very limited as it concerned retail services and the requirements for specifying those services. The requirement in question does not apply in respect of registrations for shopping arcade services. Therefore Tulliallan is not required to specify the goods to which shopping arcade services relate.
73. Tulliallan also argues in the alternative that if the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), is applicable in respect of its earlier trade marks, the General Court erred in concluding that the judgment necessarily precluded a finding of confusing similarity. According to Tulliallan, the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), does not enforce such a limitation: it provides guidance on a form of registration that would make the analysis of confusing similarity easier; it does not prevent the earlier mark holder from availing itself of the protection of Article 8(1)(b) of Regulation No 207/2009 in relation to a later, confusingly similar registration.
74. Tulliallan thus considers that the General Court ought to have concluded that the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), did not prohibit a finding of confusing similarity in the present cases and that the Board of Appeal was wrong to arrive at that conclusion. The General Court ‘ought therefore to have conducted an analysis of the similarity of the respective marks unclouded by the influence of the’ judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), or remitted the case to the Board of Appeal to do so.
75. EUIPO considers that the plea based on Article 8(1)(b) of Regulation No 207/2009 is founded with regard to the three earlier UK trade marks in the light of the judgment of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750). It considers however that this plea is unfounded with regard to the earlier EU trade mark.
76. BF and EUIPO consider that this plea should be rejected.
2. Analysis
(a) Application of the Praktiker judgment ratione temporis
77. Article 8(1)(b) of Regulation No 207/2009 provides that a trade mark shall not be registered if upon opposition by the proprietor of an earlier trade mark there is a likelihood of confusion.
78. It is settled case-law that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, the likelihood of confusion presupposes both that the trade mark applied for and the earlier trade mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier trade mark was registered, those conditions being cumulative. (40)
79. The General Court recalled at paragraph 70 of the judgments under appeal that for the retail service under Class 35 it was necessary for the goods offered for sale to be precisely specified. Given that Tulliallan had not specified the goods subject to its ‘shopping arcade services’, in accordance with judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), the General Court found that no similarity could be established between the services of the earlier trade marks and the goods covered by the trade marks applied for and thus dismissed its plea based on Article 8(1)(b) of Regulation No 207/2009 and the likelihood of confusion.
80. At paragraphs 49 and 50 of its judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), the Court held that it is not necessary to specify in detail the service(s) for the purposes of registration of a trade mark covering services provided in connection with retail trade. In order to identify those services, it is rather sufficient to use general wording such as ‘bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods’. The Court stressed, however, that the trade mark applicant must nonetheless specify the goods or types of goods to which those services relate. It is clear from this decision that the specification of the goods or types of goods is obligatory and, contrary to the contentions of Tulliallan, it does not simply amount to a matter of convenience. (41)
81. The scope ratione temporis of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), was limited by paragraphs 45 and 46 of the judgment of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750), where the Court stated that, in order to comply with the principles of legal certainty and protection of legitimate expectations, the line of authority derived from paragraphs 49 and 50 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425) concerns only applications for registration as EU trade marks and does not concern the scope of the protection of trade marks registered at the date of that judgment’s delivery. The Court accordingly found that the scope of protection of a trade mark registered before the delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), cannot be affected by the authority derived from that judgment in so far as it concerns only new applications for registration as EU trade marks. (42)
82. In my view, given that three of the earlier trade marks in this case, namely, UK trade mark No 2314342, UK trade mark No 2314343 and UK trade mark No 2330341 (43) were all registered in 2003 — i.e., before the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425) was delivered, it is clear from the judgment of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750), (44) that the General Court erred in law by stating at paragraph 70 of the judgments under appeal that Tulliallan was required to specify the goods or types of goods to which retail services in Class 35 relate. In addition, the General Court erred at paragraph 71 of the judgments under appeal in finding that in the absence of a specification of the goods or types of goods in question, no similarity or complementarity can be established between the services covered by the earlier trade marks and the goods covered by the mark applied for.
83. I therefore consider that the present plea should be upheld in relation to UK trade mark No 2314342, UK trade mark No 2314343 and UK trade mark No 2330341.
84. In accordance with Article 61 of the Statute of the Court ‘if the appeal is well founded, the Court of Justice shall quash the decision of the General Court. It may itself give final judgment in the matter, where the state of the proceedings so permits, or refer the case back to the General Court for judgment.
85. In my view, the state of the proceedings does not permit the Court to give final judgment in respect of the third plea. It follows in turn that the third plea in relation to UK trade mark No 2314342, UK trade mark No 2314343 and UK trade mark No 2330341 should be referred back to the General Court for judgment. The General Court must thus, in principle, reassess whether there is a likelihood of a risk of confusion between the three earlier UK marks in question and the marks applied for by BF. It would appear, however, from the file before the Court that the decisions of the opposition division and the contested decisions were based, for procedural reasons, solely on an examination of the earlier EU trade mark No 3 618 857 which was not subject to proof of use. It would seem, therefore, that the General Court may itself have to refer the matter back to EUIPO. This is, however, a matter for the General Court to decide.
86. I consider, however, that as EU figurative mark No 3618857 was registered on 16 October 2006 — and thus subsequent to the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425) — the ruling in the judgment of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750) which exceptionally (45) limited the application ratione temporis of the former judgment for reasons inter alia of legal certainty does not apply.
87. While Article 48(1) of Regulation No 207/2009 provides that an EU trade mark shall not be altered during the period of registration or on renewal thereof, (46) Article 43(1) of that regulation also provides, in contrast, that the trade mark applicant may at any time restrict the list of goods or services contained therein. (47) By specifying the goods or types of goods to which retail services relate, a trade mark applicant is in fact restricting, (48) in conformity with Article 43 of Regulation No 207/2009, the scope of its trade mark application. (49) It was thus possible for Tulliallan to amend its application in relation to EU figurative mark No 3618857 subsequent to the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), even after the opposition procedure in relation to that application was completed by specifying the goods or types of goods to which retail services in Class 35 related.
(b) Application of Praktiker judgment to shopping arcade services in respect of EU figurative mark No 3618857
88. Tulliallan considers that the General Court erred in applying the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), because that case specifically related to the specification of retail services while the earlier marks in question in the present appeals concern shopping arcade services.
89. In that regard, Tulliallan states that it repeats its submissions to the General Court dated 22 March 2016.
90. In my view, this argument should be dismissed as inadmissible as Tulliallan has failed to comply with Article 169(2) of the Court’s Rules of Procedure. Tulliallan has failed to identify precisely those points in the judgments under appeal which are contested. Moreover, it must be recalled that that requirement is not satisfied by an appeal which, without even specifically identifying the error of law allegedly vitiating the judgment which is the subject of that appeal, confines itself to reproducing the pleas in law and arguments previously submitted to the General Court. (50)
91. Tulliallan considers further or alternatively that the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), is limited in scope and does not require the specification of the goods or the type of goods in respect of shopping arcade services.
92. I consider that this claim, which in effect relates only to EU figurative mark No 3618857, (51) is ineffective and cannot succeed.
93. At paragraph 34 of the judgments under appeal, the General Court found that having regard to the wording of Class 35, the concept of retail service, as interpreted by the Court of Justice in paragraph 34 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), also includes a shopping arcade’s services in relation to sales.
94. For my part, however, I have serious doubts as regards the correctness of this finding by the General Court.
95. In that regard, I would note that at paragraph 34 of judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), the Court found that ‘the objective of retail trade is the sale of goods to consumers. That trade includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor’. (52)
96. It is clear from the Court’s uniform interpretation (53) of ‘retail services’ under Class 35 that those services cannot, however, apply to shopping arcade services as the entity which provides those services does not in fact trade in the goods in question. Rather the entity in question provides services to the trader of the goods which, in my view, are quite distinct from those of retail services under Class 35 and are, in fact provided for elsewhere in another class. Thus, for example, the shopping arcade services could include the rental of shops under Class 36 and the provision of advertising and promotion services under Class 35.
97. Despite my doubts on the question of whether shopping arcade services are included in the concept of retail services under Class 35, I would note that Tulliallan itself has not adequately challenged the ruling of the General Court at paragraph 34 of the judgments under appeal in the current appeals and neither EUIPO nor BF have introduced cross-appeals challenging that ruling.
98. Given that Tulliallan has not adequately appealed the General’s Courts ruling that shopping arcade’s services are included in the concept of retail services under Class 35 (54), I consider that the Court cannot overrule in the present proceedings the finding of the General Court at paragraph 72 of the judgments under appeal that the requirement to specify the goods or types of goods to which retail services apply contained in paragraph 50 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), also applies to shopping arcade services. It would be incongruous to accept that shopping arcade’s services are included in the concept of retail services under Class 35 without requiring the specification of the goods or types of goods to which retail services in Class 35 related in accordance with the clear terms of paragraph 50 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425). I therefore consider that the Court cannot conclude that the General Court erred at paragraph 71 of the judgments under appeal in finding that the absence of a specification precludes a finding of similarity and thus a likelihood of confusion between the services covered by the earlier trade mark, in this instance EU figurative mark No 3618857, and the goods covered by the marks applied for.
99. I therefore consider that the third plea should be upheld as regards UK trade mark No 2314342, UK trade mark No 2314343 and UK trade mark No 2330341 and rejected as regards EU figurative mark No 3618857.
V. Conclusion
100. In the light of the foregoing considerations, I propose that the Court:
– reject the first plea as partially unfounded and partially inadmissible;
– uphold the third plea in relation to UK trade mark No 2314342, UK trade mark No 2314343 and UK trade mark No 2330341 and thus set aside in that regard the judgments of the General Court of the European Union of 6 December 2017, Tulliallan Burlington v EUIPO — Burlington Fashion (Burlington) (T‑120/16, EU:T:2017:873), Tulliallan Burlington v EUIPO — Burlington Fashion (BURLINGTON THE ORIGINAL) (T‑121/16, not published, EU:T:2017:872), Tulliallan Burlington v EUIPO — Burlington Fashion (Burlington) (T‑122/16, not published, EU:T:2017:871), and Tulliallan Burlington v EUIPO — Burlington Fashion (BURLINGTON) (T‑123/16, not published, EU:T:2017:870);
– reject the third plea as regards EU figurative mark No 3618857;
– refer the cases back to the General Court;
– reserve the costs.