Case T‑120/16
Tulliallan Burlington Ltd
v
European Union Intellectual Property Office
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark Burlington — Earlier national word marks BURLINGTON and BURLINGTON ARCADE — Earlier EU and national figurative marks BURLINGTON ARCADE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Use in the course of trade of a sign of more than mere local significance — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — Unfair advantage taken of the distinctive character or the repute of the earlier trade marks — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))
Summary — Judgment of the General Court (Third Chamber), 6 December 2017
1. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions
(Council Regulation No 207/2009, Art. 8(5))
2. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Similarity of the marks concerned — Degree of similarity required
(Council Regulation No 207/2009, Art. 8(5))
3. Approximation of laws — Trade marks — Directive 2008/95 — Service marks — Concept of retail trade — Shopping arcade’s services in relation to sales — Included
(European Parliament and Council Directive 2008/95)
4. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage
(Council Regulation No 207/2009, Art. 8(5))
5. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(5))
6. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark Burlington — Word marks BURLINGTON and BURLINGTON ARCADE and figurative marks BURLINGTON ARCADE
(Council Regulation No 207/2009, Art. 8(5))
7. EU trade mark — Procedural provisions — Decisions of the Office — Observance of the rights of the defence — Scope of the principle
(Council Regulation No 207/2009, Art. 75)
8. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Conditions
(Council Regulation No 207/2009, Art. 8(4))
9. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
10. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark Burlington — Word marks BURLINGTON and BURLINGTON ARCADE and figurative marks BURLINGTON ARCADE
(Council Regulation No 207/2009, Art. 8(1)(b))
1. See the text of the decision.
(see para. 20)
2. See the text of the decision.
(see paras 21-23)
3. 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, C‑418/02, also includes a shopping arcade’s services in relation to sales. The concept of ‘a variety of services’, as mentioned in that paragraph, must also include the services organised by a shopping arcade in order to retain all the attractiveness and practical advantages of such a place of commerce, in accordance moreover with the actual words used in the wording of Class 35; the aim is to enable the customers interested by the various goods ‘to conveniently view and purchase [them] from a range of stores’ and thereby to increase the number of customers visiting that location interested in purchasing those goods, rather than see those goods purchased from ‘another competitor’ not having its sales outlet in the shopping arcade in question.
(see paras 33, 34)
4. See the text of the decision.
(see paras 37, 39, 42)
5. See the text of the decision.
(see paras 38, 40, 41)
6. The proprietor of the earlier marks, including the word mark BURLINGTON and the word and figurative marks BURLINGTON ARCADE previously registered in the United Kingdom for services in Classes 35, 36 and 41 within the meaning of the Nice Agreement, and the EU figurative mark BURLINGTON ARCADE registered for the same services, has not submitted to the Board of Appeal or the General Court consistent evidence from which it may be concluded that the use of the figurative mark Burlington, whose registration as an EU trade mark for goods in Classes 3, 14, 18 and 25, takes unfair advantage of the distinctive character or the repute of the earlier trade marks.
Even though the applicant stresses the ‘near uniqueness’ of its earlier trade marks and their ‘significant and exclusive’ reputation, it must be found that it has not provided specific evidence capable of substantiating the fact that the use of the mark applied for would make its earlier marks less attractive, in particular in the light of the criteria according to which such deductions must be founded on ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’.
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 previous proprietor of the earlier trade marks’ London arcade, is not such in itself as to affect, in the eyes of the average consumer, the commercial attractiveness of that place. 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.
(see paras 43-45)
7. See the text of the decision.
(see paras 54, 55)
8. See the text of the decision.
(see para. 56)
9. See the text of the decision.
(see paras 66, 67)
10. In the context of the assessment of the likelihood of confusion between, on the one hand, the Burlington figurative mark, whose registration as an EU mark is sought for goods in Classes 3, 14, 18 and 25 within the meaning of the Nice Agreement and, on the other hand, the earlier national word marks BURLINGTON and BURLINGTON ARCADE, as well as the earlier EU and national figurative marks BURLINGTON ARCADE, registered for services in Classes 35, 36 and 41, it must be held that the services covered by the earlier marks and the goods covered by the mark applied for are dissimilar.
First, as regards the services in Class 36, it is not disputed that, for example, there is no similarity between the rental of shops and offices or real estate management services and goods such as soap, jewellery and leather articles. Secondly, as regards the services in Class 35, for the retail service, it is necessary for the goods offered for sale to be precisely specified. 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 of the mark applied for, since the definition provided by the applicant in the present case relating to ‘luxury goods’ is insufficient in order to specify the goods concerned. Accordingly, in the absence of such a specification, 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.
In addition, it must be found that the overlap in the groups of end customers is insufficient to prove a likelihood of confusion in the absence of any specification of the goods that may be sold in the arcade units.
(see paras 69-72)