JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
26 September 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark GRAZIA — Earlier national figurative mark GRAZIA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Lack of similarity between the goods — Article 8(5) of Regulation No 207/2009 — Reputation — No link between the marks at issue)
In Case T‑490/12,
Arnoldo Mondadori Editore SpA, established in Milan (Italy), represented by G. Dragotti, R. Valenti and S. Balice, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Schifko, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Grazia Equity GmbH, established in Stuttgart (Germany), represented by M. Müller, lawyer,
ACTION for annulment of the decision of the Fourth Board of Appeal of OHIM of 6 September 2012 (Case R 1958/2010-4) relating to opposition proceedings between Arnoldo Mondadori Editore SpA and Grazia Equity GmbH,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,
Registrar: B. Pastor, Deputy Registrar,
having regard to the application lodged at the Registry of the General Court on 6 November 2012,
having regard to the response lodged by OHIM at the Court Registry on 27 March 2013,
having regard to the response lodged by the intervener at the Court Registry on 15 March 2013,
having regard to the reply lodged at the Court Registry on 3 July 2013,
having regard to the rejoinder lodged by the intervener at the Court Registry on 14 October 2013,
having regard to the change in the composition of the chambers of the General Court,
further to the hearing on 11 June 2014, at which the intervener did not participate,
gives the following
Judgment
Background to the dispute
1 On 8 April 2008, the intervener, Grazia Equity GmbH, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the word sign GRAZIA.
3 The services for which registration was sought fall within Classes 35 and 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 1 June 1957, as revised and amended, and correspond, in relation to each of those classes, to the following description:
– Class 35: ‘Business consultancy, in particular business management and organisation consultancy, efficiency experts, professional business project management and checking (supervision) services for the planning and monitoring of business developments; business consultancy and advisory services; arranging of contracts for others for the providing of services’;
– Class 36: ‘Financing services; brokerage of business investments with private equity; arranging contracts for the procurement of financial capital; financing consultancy, in particular financing consultancy with regard to company take-overs; financial business valuations; mergers and acquisitions, namely financial consultancy with regard to the purchase or sale of companies and company shares; capital investments; venture capital fund administration’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 24/2008 of 16 June 2008.
5 On 16 September 2008, the applicant, Arnoldo Mondadori Editore SpA, filed a notice of opposition to the registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on a number of earlier trade marks which have been the subject of registration at international and Community level as well as in Italy, in particular Italian figurative mark No 906507, registered on 3 September 2003 for goods and services in Classes 3, 9, 16, 18, 25 and 38 (‘the earlier figurative mark’) and corresponding to the following sign:
7 The opposition was based on all the goods and services in respect of which the earlier marks were protected. The most exhaustive list of the goods and services covered by the earlier marks is that relating to the earlier figurative mark and corresponds, for each of the Classes 3, 9, 16, 18, 25 and 38, to the following description:
– Class 3: ‘Perfumes and cosmetics, essential oils, hair dyes and hair lotions, dentifrices, soaps, face and body creams, face powders, nail varnish, mascara, deodorants for personal uses, toiletries, cosmetic preparations for slimming purposes, detergents and preparations for cleaning and polishing’;
– Class 9: ‘Electric and electronic apparatus, scientific instruments, radio sets, photographic, optical, measuring, signalling and teaching apparatus; software preinstalled on electronic cards or computers, desktop and portable computers, printers, modems, computer accessories, apparatus for recording, transmission or reproduction of sound, images and software, software downloaded onto computers using communications services, software pre-recorded onto tape, CD-ROMs, diskettes, software for management, control, diagnostics and analysis of computers and computer networks, cassettes, tapes, audio and video CD-ROMs, electronic games apparatus whether or not pre-recorded for use with television sets, spectacles and accessories for spectacles’;
– Class 16: ‘Articles of paper, cardboard, office requisites, inkstands, pens, pencils, stationery, playing cards, printed matter, newspapers, magazines, periodicals, pamphlets, books, instruction manuals, reference guides, catalogues, journals, diaries, posters, photographs, adhesive labels and printed matter, teaching material’;
– Class 18: ‘Goods made of leather, skins and imitations of leather and skins, bags, handbags, travelling bags, trunks, suitcases, coin-purses, document holders, key-cases of leather and skins, umbrellas’;
– Class 25: ‘Apparel for men, women and child, dresses, shirts, trousers, shorts, jackets and greatcoats, shirts, T-shirts, jerseys, pullovers, sweatshirts, swimsuits, belts, hats, scarves, ties, gloves, shoes’;
– Class 38: ‘Telecommunications services, radio and television broadcasting, in particular direct satellite radio broadcasting whose signals can be rebroadcast from television aerials via cable and tertiary radio and television transmitters or by means of online services via data transmission or computer networks, cellular telephone communication, communications by computer terminals, computer-aided transmission of messages and images, electronic mail, information about telecommunications, electronic bulletin boards, electronic transmission of data and documents by computer, distribution (transmission) of data and mail by electronic means, news and information agencies and press agencies’.
8 The grounds put forward in support of the opposition were those set out in Article 8(1)(a) and (b) and (5) of Regulation No 40/94 (now Article 8(1)(a) and (b) and (5) of Regulation No 207/2009).
9 On 10 August 2010, the Opposition Division rejected the opposition, concluding, in essence, that there was no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 as all the goods and services designated by the marks in question were different. Moreover, it rejected the opposition based on Article 8(5) of Regulation No 207/2009, on the ground that the applicant had failed to establish that use of the mark applied for would take unfair advantage of or be detrimental to the distinctive character of the earlier mark.
10 On 8 October 2010, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11 By decision of 6 September 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the applicant’s appeal. First, in so far as the opposition was based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal took the view that, as the goods and services covered by the marks at issue were different, there was no likelihood of confusion, regardless of how similar the signs might be and of the reputation enjoyed by the earlier figurative mark (see paragraph 26 of the contested decision). Second, in so far as the opposition was based on Article 8(5) of Regulation No 207/2009, the Board of Appeal considered, in essence, that the applicant had failed to prove that the earlier figurative mark enjoyed a reputation (see paragraph 37 of the contested decision) and concluded that there was no link between the goods and services covered by the marks at issue (see paragraph 44 of the contested decision).
Forms of order sought by the parties
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its application, the applicant puts forward, in essence, two pleas in law. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea alleges infringement of Article 8(5) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
15 The applicant claims, in essence, that the Board of Appeal erred in concluding that there was no likelihood of confusion between the marks at issue, in reliance on two main grounds. First, the Board of Appeal should have established that many of the goods and services covered by the earlier figurative mark would ‘substantially interfere’ with the services covered by the mark applied for. Second, the Board of Appeal should have carried out an overall assessment of the likelihood of confusion, taking into account all factors relevant to the circumstances of the case.
16 OHIM and the intervener dispute those arguments.
17 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered 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.
18 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratoire RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
20 As a preliminary point, it should be noted, first, that the applicant submits that the Board of Appeal was incorrect to state, at paragraph 25 of the contested decision, that the applicant appeared ‘to have abandoned Article 8(1)(b) of Regulation No 207/2009 as ground for opposition altogether’. Even assuming that the Board of Appeal was incorrect to state in the contested decision that the applicant appeared to have abandoned that ground of opposition, the fact nevertheless remains, in any event, that it gave an express decision on that ground of opposition, finding that the goods and services covered by the marks in question were not similar. Accordingly, any error the Board of Appeal may have committed in that regard is not, in any event, such as to lead to the annulment of the contested decision.
21 Second, it is common ground, as the Board of Appeal observed at paragraph 47 of the contested decision, that the marks at issue are identical as the word mark applied for, GRAZIA, is the only element of which the earlier figurative mark is composed and is written in normal typeface. Moreover, it should be noted that, in view of the fact that the earlier figurative mark was, of all the earlier marks relied on in support of the opposition, that which covered the greatest number of classes of goods and services, the Board of Appeal was entitled, at paragraph 4 of the contested decision, to limit the scope of its examination to whether there was any likelihood of confusion between the earlier figurative mark and the mark applied for.
22 It is in the light of the considerations set out at paragraphs 20 and 21 above that it is necessary to examine the two complaints put forward by the applicant to challenge the Board of Appeal’s conclusion that one of the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 was not fulfilled.
23 In the first place, the applicant disputes, in essence, the Board of Appeal’s conclusion that the goods and services covered by the signs in question are not similar and contends that may of the goods and services covered by the earlier figurative mark in Classes 9, 16 and 38 — as set out in paragraph 7 above — ‘substantially interfere’ with many of the goods and services covered by the mark applied for. The applicant argues in that regard, first, that financial and business consultancy services are usually offered with the aid of computers and computer programmes, that those services involve the publication of information and official statements, either in printed form or by electronic means, and that the applicant and the intervener have clients in common in the fashion sector. Second, the applicant maintains that the Board of Appeal should have taken account of the fact that the applicant has used the earlier mark for financial services, by offering the ‘Grazia Insider’ card, for example.
24 The Board of Appeal found, at paragraph 23 of the contested decision, as did the Opposition Division, that the goods and services covered by the earlier mark and registered in Classes 3, 9, 16, 18, 25 and 38 are different in all respects from the services covered by the trade mark applied for, which are, essentially, business consultancy services and financial and brokerage services. The Board of Appeal considered that the goods covered by the earlier mark in Class 9, such as software pre-installed on computers, the goods in Class 16, such as newspapers and magazines, and those in Class 38, such as telecommunication services, have no connection with the services offered by the intervener. Accordingly, the Board of Appeal stated, in essence, that, in accordance with the judgment in Case T‑336/03 Éditions Albert René v OHMI — Orange (MOBILIX) [2005] ECR II‑4667, paragraph 69, the fact that the intervener uses computers, paper or telecommunications is irrelevant for purpose of establishing whether the goods and services covered by the earlier figurative mark may be similar.
25 According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
26 In the present case, it is clear that the ‘interference’ between the goods and services concerned, as alleged by the applicant and described in paragraph 23 above, is not such as to establish that those goods and services are similar.
27 It should be noted, first, that the applicant has not put forward any argument to challenge the Board of Appeal’s conclusion, set out at paragraph 23 of the contested decision, that the services covered by the mark applied for, that is, in essence, business consultancy services and financial and brokerage services, are different, in terms of their nature, intended purpose and method of use, from the goods and services covered by the earlier figurative mark set out at paragraph 7 above. Nor has the applicant argued that the goods and services covered by the marks at issue are in competition with each other.
28 Next, the applicant has not put forward any argument to establish that the Board of Appeal erred in concluding, on the basis of the case-law cited at paragraph 25 above, that, in view of the very widespread use of computers by companies, the fact that they are used by the applicant and the intervener to market their goods and services is insufficient in itself to establish that those goods and services are similar or complementary. Similarly, the fact that the intervener, which offers business consultancy services and financial and brokerage services, may, in the same way as all businesses that have to provide information on the goods and services which they market, have recourse to publishing information or official statements, either in electronic form or on paper, does not establish that it offers services similar to those provided by the applicant.
29 Moreover, the applicant’s argument that the goods and services covered by the marks at issue are similar as the applicant and the intervener have clients in common in the fashion sector must be rejected as unfounded. First, the applicant has failed to furnish any proof that the applicant and the intervener have clients in common. Second and in any event, it is clear, as OHIM was correct to point out at the hearing, that the services covered by the mark applied for are directed at all businesses in general, and the fact that some of those businesses operate, in the same way as the applicant, in sectors connected with the fashion industry is not significant for the purpose of assessing the similarity of the goods and services.
30 Lastly, the applicant’s argument that the goods and services covered by the marks at issue are similar as the applicant used the earlier figurative mark for financial services, by offering, for example, the ‘Grazia Insider’ card, must be rejected. In the context of opposition proceedings, OHIM may take account of the list of goods applied for only as it appears in the trade mark application concerned, subject to any amendments thereto (judgment of 13 April 2005 in Case T‑286/03 Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport), not published in the ECR, paragraph 33, and Case T‑364/05 Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 89). Accordingly, the fact that the applicant has in fact used the earlier figurative mark to market financial services is irrelevant for the purposes of the assessment of the similarity of the goods and services covered by the marks in question.
31 In the second place, the applicant contends that the Board of Appeal should have carried out an overall assessment of the likelihood of confusion, taking account of all factors relevant to the circumstances of the case, in view in particular of the fact that the earlier figurative mark is highly distinctive per se and is well known to the relevant public. However, that argument must be rejected as unfounded. As the Board of Appeal was correct to observe at paragraph 26 of the contested decision, without the applicant putting forward any argument to contest its observations, it is apparent from case-law that, for the purpose of the application of Article 8(1)(b) of Regulation No 207/2009, it is still necessary, even where the trade mark applied for is identical to a mark with a particularly distinctive character, to prove that the goods or services in question are to some degree similar (see, to that effect, the order of 9 March 2007 in Case C‑196/06 P Alecasan v OHIM, not published in the ECR, paragraph 24 and the case-law cited). Accordingly, the simple fact that the goods and services covered by the marks at issue are not similar makes it possible to rule out any likelihood of confusion, and that conclusion cannot be affected by any finding that the earlier figurative mark is highly distinctive per se or that it is well known to the relevant public.
32 In the light of the foregoing considerations, it must be held that the Board of Appeal did not err in concluding that there was no likelihood of confusion, for the purposes of Article 8(1)(b) of Regulation No 207/2009, between the marks at issue.
33 Consequently, the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
34 The applicant submits, in essence, that the Board of Appeal was incorrect to dismiss the ground of opposition based on Article 8(5) of Regulation No 207/2009. First, it takes the view that the Board of Appeal was incorrect to consider that the applicant had not proven the reputation enjoyed by the earlier figurative mark. Second, it disputes the Board of Appeal’s finding that there was no link between the goods and services at issue.
35 OHIM and the intervener dispute those arguments.
36 Article 8(5) of Regulation No 207/2009 provides that ‘upon opposition by the proprietor of an 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, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.
37 It is apparent from the wording of that provision that its application is subject to the following conditions: first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. Those conditions are cumulative, failure to fulfil one of them being sufficient to render that provision inapplicable (Case T‑67/04 Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II‑1825, paragraph 30; Case T‑215/03 Sigla v OHIM — Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 34; and Case T‑438/07 Spa Monopole v OHIM — De Francesco Import (SpagO) [2009] ECR II‑4115, paragraph 14).
38 In the present case, it being common ground that, as noted at paragraph 21 above, the first condition set out at paragraph 37 above is fulfilled as the marks at issue are identical, it is necessary to examine the second and third conditions set out at paragraph 37 above.
The second condition, relating the reputation of the earlier figurative mark
39 According to established case-law, an earlier trade mark enjoys a reputation if it is known by a significant part of the public concerned by the goods or services covered by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, such as traders in a specific sector. In examining whether this condition is fulfilled, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking concerned in promoting it, although it cannot be required that that mark should be well known by a given percentage of the public as identified above or that its reputation should have spread throughout the whole of the territory concerned, provided that it enjoys a reputation in a substantial part of that territory (see, to that effect, Case T‑8/03 Corte Inglés v OHIM — Pucci (EMILIO PUCCI) [2004] ECR II‑4297, paragraph 67 and the case-law cited, and the judgment of 10 May 2007 in Case T‑47/06 Antartica v OHIM — Nasdaq Stock Market (nasdaq), not published in the ECR, paragraph 46 and the case-law cited). It is necessary to carry out an overall assessment of the evidence adduced by the proprietor of the trade mark in order to establish whether that mark has a reputation (see, to that effect, Case C‑100/11 P Helena Rubinstein and L’Oréal v OHIM [2012] ECR, paragraph 72).
40 Moreover, although the reputation of an earlier trade mark must be established as at the date on which the application for the disputed mark was filed, documents bearing a subsequent date do not, in any event, lack evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information, since, as a general rule, the reputation of a trade mark is acquired gradually over a period of time. The evidential value of such a document may vary depending on how close the period to which the document relates is to the date on which the application was filed (judgment of 16 December 2010 in Joined Cases T‑345/08 and T‑357/08 Rubinstein and L’Oréal v OHIM — Allergan (BOTOLIST and BOTOCYL), not published in the ECR, paragraph 52).
41 It should be noted in the present case, first, that at paragraphs 30 to 35 of the contested decision, the Board of Appeal took the view, in essence, that, in view of the proof of use furnished by the applicant in the proceedings before OHIM, it was necessary to ascertain whether the applicant had established that the earlier figurative mark had a reputation in Italy for fashion magazines — designated in Class 16 — with the relevant public, which consisted of average consumers, without there being any need to make a distinction between the male and female members of that public. That assessment on the part of the Board of Appeal, which the applicant shares as it states in its written submissions that it considers that it has demonstrated that ‘in Italy everybody (not only women) knows that Grazia is one of the most well-known female magazines’, must be upheld. It is therefore necessary to examine whether, as the applicant maintains, the Board of Appeal erred, at paragraphs 38 to 43 of the contested decision, by taking the view that it was not possible to conclude, on the basis of the documents produced by the applicant before OHIM, that the earlier figurative mark had a reputation in Italy.
42 In the first place, it should be noted that in its written submissions the applicant indicated that it was providing to the Court, in Annex 11 to the application, further evidence establishing the reputation of the earlier figurative mark. It also stated that, ‘in case of need’, it could provide to the Court further documents establishing the reputation of the earlier figurative mark.
43 It should be recalled, as observed in essence by OHIM, that it is settled case-law that the purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purpose of Article 65 of Regulation No 207/2009. It follows from that provision that facts not relied on by the parties before the adjudicatory bodies of OHIM cannot be relied on at the stage when an action is brought before the General Court and that the General Court cannot re-evaluate the facts in the light of evidence submitted for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraphs 50 to 52; Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraphs 136 to 138; and judgment of 25 October 2013 in Case T‑416/11 Biotronik SE v OHIM — Cardios Sistemas (CARDIO MANAGER), not published in the ECR, paragraph 19).
44 Accordingly, in the present case, both the documents referred to at paragraph 42 above, which were not produced before OHIM, and the applicant’s proposal also mentioned in that paragraph must be rejected as inadmissible.
45 In the second place, the applicant’s argument essentially maintaining that the Board of Appeal should not have concluded that the earlier figurative mark is not well known as its reputation had not previously been called into question must be rejected as unfounded. Indeed, it is apparent from Article 64(1) of Regulation No 207/2009 that following the examination as to the merits of the appeal, the Board of Appeal is to decide on the appeal and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is to say, in the present case, give a decision itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the contested decision. It therefore follows from that provision that the effect of any appeal brought before it is that the Board of Appeal is required to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see, to that effect, Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 57). Accordingly, the fact that the adjudicating bodies of OHIM other than the Board of Appeal did not call into question the reputation of the earlier figurative mark cannot prevent the latter from carrying out such an examination itself.
46 In the third place, it is necessary to examine whether the documents provided by the applicant, considered as a whole, establish that, contrary to what was concluded by the Board of Appeal, the earlier figurative mark does enjoy a reputation within the relevant territory.
47 First, with regard to the length of time the earlier figurative mark has been in use, it is clear, as the applicant has observed, that the Board of Appeal failed in the contested decision to take into account, as a relevant factor in the assessment of the reputation of the earlier figurative mark, the fact that the applicant furnished evidence that the word ‘grazia’ has been used since 1938 to identify fashion magazines. Indeed, the applicant provided a press cutting giving the history of the publication of the magazine Grazia from 1938, as well as copies of the cover page of the magazine bearing the earlier figurative mark covering a period of over 50 years preceding the application for registration of the contested mark.
48 Second, as regards the geographic extent of use of the earlier figurative mark, it should be noted that the applicant provided, as the Board of Appeal was correct to acknowledge at paragraph 38 of the contested decision, two series of documents.
49 The first series of documents consists of three extracts, the first two dated 20 December 2005 and the third 27 January 2009, all of which are taken from the applicant’s official website and contain information relating, inter alia, to its ‘investor relations’ and to ‘corporate governance’. The documents indicate that the magazine Grazia is a weekly magazine, that, on average, 245 000 copies were distributed in 2005 and 213 683 in 2009, and that it had a readership of 996 000 in 2005 and 845 000 in 2009. Those three documents indicate that the magazine Grazia is the leading weekly women’s magazine in Italy in terms of distribution.
50 The second series of documents consists of lists of magazines distributed by the applicant, including the magazine Grazia, and sold to three agencies, situated in the north (Segrate), the centre (Rome) and the south (Modugno) of Italy, inter alia in the month of December in 2004, 2006, 2007 and 2008. Those lists set out varying quantities of magazines distributed to those agencies containing the word element ‘grazia’. The number of copies distributed to each of those three agencies was, for example, in excess of 13 000 for the month of December in 2004, 2006 and 2008.
51 In the light of the facts set out at paragraphs 49 and 50 above, it is clear, contrary to what is claimed by the intervener, that the applicant has established that the word element ‘grazia’ of which the earlier figurative mark is composed appears on magazines which are widely distributed throughout Italy.
52 It should be noted in that regard, first, that, as the Board of Appeal concluded, in essence, at paragraph 38 of the contested decision, the extracts from pages taken from the applicant’s official website referred to at paragraph 49 above do not indicate the sources of the figures and information given in those extracts, in particular the source of the claim that Grazia is the most widely distributed women’s magazine in Italy.
53 However, first, it is clear that neither the Board of Appeal, nor OHIM nor the intervener have put forward any concrete argument capable of calling into question the figures and information given on those pages. Second and in any event, it should be recalled that, in assessing the evidential value of a document, regard should be had to the credibility of the account it contains, taking into account the person from whom it originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the basis of its content, it seems sound and reliable (see, to that effect, the judgment of 13 June 2012 in Case T‑312/11 Süd-Chemie v OHIM — Byk-Cera (CERATIX), not published in the ECR, paragraph 29 and the case-law cited). In the present case, since the figures and information provided by the applicant, which are taken from its official website, are public documents designed to provide information to its investors, to whom it may be accountable in the event of disclosure of false or misleading information, they must be accorded, contrary to the view expressed by the Board of Appeal at paragraph 38 of the contested decision, a certain probative value. In that regard, it should be noted that, in response to questions put by the General Court at the hearing, OHIIM acknowledged that, while those documents are not sufficient in themselves to establish the reputation of the earlier figurative mark, they are nevertheless capable of contributing to the establishment of that reputation.
54 Next, it should be noted, first, that, contrary to the view also expressed by the Board of Appeal at paragraph 38 of the contested decision, the distribution figures for magazines whose title includes the word element ‘grazia’ are not, as is apparent from facts set out at paragraph 50 above, merely 8 000 copies per month and indeed, on a number of occasions between 2004 and 2008, they exceeded 13 000 copies per month for each of the three agencies in question, which, as confirmed by the applicant at the hearing, were responsible for the distribution of the magazines to retailers. It should also be noted in that regard that the Board of Appeal was incorrect to state that it is not possible, on the basis of those documents, to ascertain whether those figures are ‘per week, per volume or per year’, given that, at the bottom of those lists, each of which relates to the month of December in different years, it is expressly stated that the figures concern ‘total monthly supply’. Second and in any event, while it is true, as the Board of Appeal stated at paragraph 38 of the contested decision, that it is not possible on the basis of those lists to corroborate the distribution volume indicated on the extracts from pages taken from the applicant’s official website, the fact nevertheless remains that those lists confirm that magazines whose title includes the word element ‘grazia’ are distributed throughout Italy and that, for example, in the month of December 2004 alone, more than 40 000 copies were sent to the three agencies concerned, a point not contested by OHIM in response to questions put by the Court at the hearing in that regard. OHIM’s argument that a distribution figure of 8 000 copies per month is low, having regard to the size of the Italian market, must therefore be dismissed in any event as unfounded.
55 Lastly, it should be noted that an article from the magazine Prima of 1 May 2003, which the Board of Appeal does not refer to in the contested decision, states that the magazine Grazia is highly successful and generated more than EUR 48 million in advertising revenue in 2002. Since the advertising revenue of a magazine is dependent on its distribution, that article suggests that the magazine Grazia is widely distributed throughout the relevant territory. On the other hand, it must also be observed in that connection that, while it is true that the covers of the foreign versions of magazines containing the word element ‘grazia’ provided by the applicant suggest, as the applicant maintains, that that magazine is distributed in many countries other than Italy, those documents are not, in any event, relevant for the purpose of establishing the reputation of that mark within Italy. For the same reason, the argument put forward by the applicant at the hearing that there were, on the day of the hearing, 22 local editions of the magazine Grazia throughout the world does not, in any event, substantiate the claim that the earlier figurative mark has a reputation in Italy.
56 Thirdly, with regard to the extent of the relevant public’s knowledge of the earlier figurative mark, the applicant has provided a study carried out by a market research institute in March 2006. It is true, as the Board of Appeal was correct to point out at paragraph 40 of the contested decision, that the specific purpose of that study was not to examine the reputation enjoyed by the earlier figurative mark among the Italian public. Moreover, as the Board of Appeal also stated in that paragraph and OHIM was correct to observe, that study, which concerned a sample of 2 046 persons forming part of the relevant public, was conducted on the basis of questions which were not confined to determining whether those persons were familiar with the earlier figurative mark or whether they were familiar with the goods or services covered by that mark.
57 However, it is possible to establish on the basis of that study that, when presented with 21 magazines belonging to the applicant, 63% of the relevant public stated that the magazine Grazia was familiar to them, if only by name, and that 51% of the relevant public knew that that magazine dealt with subjects such as beauty, make-up and cosmetics. That study, which, it is not disputed, was conducted on the basis of a representative sample of the relevant public, therefore shows, at the very least, that more than half the persons questioned were familiar, in 2006, with the magazine identified by the word element ‘grazia’ of which the earlier figurative mark is composed and with the content of the magazine which that mark identifies.
58 The Board of Appeal’s finding at paragraph 40 of the contested decision and the intervener’s argument that, in essence, it is not possible on the basis of that market research institute study to conclude that the earlier figurative mark was well known, since it shows that half the people questioned did not know what the magazine Grazia covered or were not familiar with that mark, must be rejected. In accordance with the case-law cited at paragraph 39 above, in order for a trade mark to be regarded as enjoying a reputation, it is not necessary for all the relevant public to be familiar with it but only a significant part of that public, which is what the study suggests in the present case.
59 Fourthly, with regard to the amount spent by the undertaking concerned in promoting the earlier figurative mark, it is clear that the applicant has provided several documents in that regard.
60 First of all, the applicant has provided an extract from a corporate album entitled ‘Mondadori 1907/2007’, indicating that from 1960 it engaged systematically in activities to ‘support and promote’ its trade marks, such as the earlier figurative mark, by organising, inter alia, competitions for its readers. The applicant also provided a promotional film, lasting a few minutes, which presents the magazine Grazia.
61 Next, the applicant has provided documents establishing that it organised events to promote the earlier figurative mark. Those documents include a poster indicating that the ‘Milan meets fashion’ event during the Milan fashion week 27 February to 5 March 2003 was sponsored by the magazine Grazia. The fact that the earlier figurative mark was actively promoted is also apparent from articles showing that Grazia collaborated with very famous fashion designers, such as Girogio Armani, in the editing of its special edition of 25 October 2010, for which Armani was editor-in-chief. While it is true, as the Board of Appeal was correct to point out at paragraph 42 of the contested decision and as observed by OHIM, that the fact that the name of the magazine Grazia appears alongside that of famous personalities does not mean that it is equally well known as those personalities, the fact nevertheless remains that, by associating that mark with events and persons whose reputation is not disputed, the applicant has succeeded in establishing, at the very least, that it has engaged in major advertising campaigns to promote the mark among the relevant Italian public.
62 Moreover, the applicant has provided an article dated 28 January 2009 from the online car magazine ‘omniauto.it’ showing that the women’s magazine Grazia collaborated with the car manufacturer Renault to create a special series of the Renault Modus model dedicated to women and that that special series, named ‘Modus Grazia’, would be the subject of an appropriate television advertising campaign. The argument put forward by OHIM at the hearing that that article is irrelevant in the present case as it is not apparent from the article that the earlier figurative mark is well known for the goods covered by the registration in question must be rejected. While it is true that that article does not prove that the trade mark GRAZIA is well known in connection with magazines, the fact nevertheless remains that it suggests, at the very least, that, in the eyes of that car manufacturer, the earlier figurative mark enjoys a reputation among the Italian female public of such a kind as to attract that clientele to its vehicles.
63 Lastly, it should be noted that the applicant has produced articles published in the press showing the development of the magazine Grazia, such as the article from the magazine Panorama of 26 June 2008, which explains that the magazine has been ‘revamped to strengthen its leadership and its ability to speak to women’, or the article from the magazine Prima of 1 May 2003, which explains the transformation the magazine has undergone since 1997. While it is true, as the intervener maintains, that those articles do not demonstrate the ‘omnipresence of the magazine Grazia in the press’, the fact remains that they suggest that the earlier figurative mark appears in the press directed at the relevant public. It should be pointed out in that regard that, contrary to what was claimed by the applicant at the hearing, it is not possible on the basis of the documents which it provided to OHIM to establish that the magazine Grazia was discussed on evening-time current affairs television programmes in Italy. The documents provided by the applicant, which include the transcript of what may be interviews of the applicant’s directors by journalists, do not in any event include any indication of the source of those documents which would make it possible to identify the current affairs television programme concerned or the date of any such programme.
64 It is apparent from the overall assessment of the evidence furnished by the applicant and examined in paragraphs 47 to 63 above that the earlier figurative mark is well known to a significant part of the relevant public concerned by the goods and services covered by that mark.
65 The other arguments put forward by OHIM and the intervener cannot affect that finding.
66 First, OHIM’s argument that the simple proof that the magazine Grazia has been published for 50 years is not sufficient to demonstrate that the earlier figurative mark enjoys a reputation must be rejected as unfounded. As is apparent from paragraphs 47 to 63 above, the applicant has provided a great deal of evidence in addition to that attesting to the fact that the earlier figurative mark has been present on the market for a long time, in order to establish that it enjoys a reputation.
67 Second, the intervener’s argument that the documents provided by the applicant to OHIM are not sufficient for the purpose of proving ‘that the applicant enjoyed a particular market share’ must be rejected as ineffective. Indeed, as is apparent from the case-law cited at paragraph 39 above, an applicant is not required to prove that it has a specific market share, provided that it establishes that it enjoys a reputation in a substantial part of the relevant territory.
68 In the light of all the considerations set out at paragraphs 47 to 67 above, the Court finds that the applicant has established that the earlier figurative mark enjoyed a reputation in the relevant territory. Contrary to what the applicant claims, however, that trade mark cannot be said to have a strong reputation. As is apparent from the information provided by the applicant, in particular that referred to at paragraph 57 above, 63% of the relevant public stated that they were familiar with the magazine Grazia, if only by name, and 51% of the relevant public knew that the magazine dealt with subjects such as beauty, make-up and cosmetics. It is not possible on the basis of any other document provided by the applicant to establish that the reputation enjoyed by the earlier figurative mark in Italy was greater than that reflected in those percentages.
69 Accordingly, the Court upholds the applicant’s complaint that the Board of Appeal was incorrect to conclude that no proof had been furnished that the earlier figurative mark enjoys a reputation, given that the applicant had established to the requisite legal standard that that mark is well known. Since, as is apparent from the case-law cited at paragraph 37 above, the conditions for the application of Article 8(5) of Regulation No 207/2009 are cumulative, it is only if the Court considers that the Board of Appeal was incorrect in its view that the third condition, relating to the assessment of the likelihood that the use without due cause of the earlier figurative mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of that mark, was not fulfilled that the error committed by the Board of Appeal will result in the annulment of the contested decision.
The third condition, relating to the assessment of the likelihood that the use without due cause of the earlier figurative mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of that mark
70 According to case-law, the infringements 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 subsequent marks, as a result of which the relevant section of the public makes a connection between the two marks, that is to say, establishes a link between them even though it does not confuse them (see the order of 30 April 2009 in Case C‑136/08 P Japan Tobacco v OHIM, not published in the ECR, paragraph 25 and the case-law cited; the judgment of 25 January 2012 in Case T‑332/10 Viaguara v OHIM — Pfizer (VIAGUARA), not published in the ECR, paragraph 22; and the judgment of 14 December 2012 in Case T‑357/11 Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), not published in the ECR, paragraph 29).
71 The existence of any such link must be the subject of an overall assessment, taking into account all factors relevant to the circumstances of the case. Those factors include: (i) the degree of similarity between the marks at issue; (ii) the nature of the goods or services concerned by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; (iii) the strength of the earlier mark’s reputation; (iv) the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and (v) whether there is a likelihood of confusion on the part of the public (see, by analogy, with reference to Article 4(4)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which, for all essential purposes, is identical to Article 8(5) of Regulation No 207/2009, Case C‑252/07 Intel Corporation [2008] ECR I‑8823, paragraph 42; the judgment of 12 March 2009 in Case C‑320/07 P Antartica v OHIM, not published in the ECR, paragraph 45; and the order in Japan Tobacco v OHIM, paragraph 70 above, paragraph 26).
72 In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see the judgment in Antartica v OHIM, paragraph 71 above, paragraph 44 and the case-law cited, and the order in Japan Tobacco v OHIM, paragraph 70 above, paragraph 27 and the case-law cited).
73 In the present case, first of all, it should be noted, as observed at paragraph 21 above, that the signs at issue are identical.
74 Second, as the Board of Appeal was correct to observe and as is apparent from paragraphs 27 to 30 above, the goods and services covered by the marks at issue are different in every respect. It should also be noted in that regard that while, as the applicant maintains, the fashion magazines covered by the earlier figurative mark evoke an image of ‘exclusivity, beauty and fashion’, the goods and services covered by the mark applied for, which consist, in essence, of business consultancy and financial services, do not evoke such an image. The applicant’s argument that when a search is made of the word ‘grazia’, some Internet search engines will bring up first of all the intervener’s website does not, in any event, affect the finding that the goods and services at issue are different and do not evoke a similar image of ‘exclusivity, beauty and fashion’.
75 Third, the sections of the public at which the goods and services covered by the marks at issue are directed overlap in part; it is not the case, as the Board of Appeal maintained at paragraphs 45 and 46 of the contested decision and as OHIM argued at the hearing, that those sections of the public are different. On the one hand, it is common ground that the fashion magazines covered by the earlier figurative mark are directed at the general public. On the other hand, while it is true, as the Board of Appeal was correct to observe at paragraph 45 of the contested decision, that some of the services covered by the mark applied for, such as ‘business consultancy’ services, are essentially directed at professionals, the possibility cannot be ruled out that other services covered by the mark applied for, such as ‘financing services’, are also directed at the general public.
76 Fourth, with regard to the strength of the earlier figurative mark’s reputation and distinctive character, it should be noted, first, that, as observed at paragraph 68 above, while the Board of Appeal erred in not finding that that mark enjoyed a reputation, the fact nevertheless remains that it is not possible, on the basis of the evidence adduced by the applicant, to regard that mark as having a strong reputation. Second, a trade mark with a reputation necessarily has distinctive character acquired through use (Intel Corporation, paragraph 71 above, paragraph 73), which the Board of Appeal also failed to point out in the present case. On the other hand, those observations do not call into question the Board of Appeal’s finding that the earlier figurative mark has weak inherent distinctive character, in view of the fact that the word ‘grazia’, which means grace or elegance in Italian, evokes the image that fashion magazines seek to promote. In that regard, the applicant’s argument that the word ‘grazia’ is also a woman’s name in Italy does not, in any event, undermine the finding that the earlier figurative mark could also be understood, at least by a significant part of the relevant public, as having several different meanings — as the applicant itself acknowledged at the hearing in response to questions put by the Court — including references to ‘grace’ or ‘elegance’. In those circumstances, the applicant’s argument that the Board of Appeal was incorrect to conclude that the earlier figurative mark has only weak distinctive character must be rejected as unfounded.
77 Fifth, as observed at paragraph 32 above, there must be no likelihood of confusion between the marks at issue.
78 In the light of all the considerations set out at paragraphs 73 to 77 above, the Court finds that, even though the signs at issue are identical (see paragraph 73 above) and the sections of the public to which the goods and services covered by those signs are directed overlap in part (see paragraph 75 above), there is no likelihood of a connection being made between them, as those goods and services are different in all respects; in particular, the images which they evoke bear no relation to each other (see paragraph 74 above), the earlier figurative mark does not have a particularly strong reputation (see paragraph 76 above), that mark has weak inherent distinctive character (see paragraph 76 above), and the relevant public is unlikely to confuse the signs with each other (see paragraph 77 above).
79 Accordingly, it must be held, as the Board of Appeal was correct to conclude, in essence, at paragraph 49 of the contested decision, that in the absence of any link that may be established between the marks at issue, 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 figurative mark.
80 It should be noted in that regard that, as is apparent, in essence, from the case-law cited at paragraph 71 above, it is possible to conclude, on the basis of the finding that there is no link between the marks at issue, that use of the later mark is unlikely to take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark. Accordingly, the applicant’s argument that, before considering whether such a link existed, the Board of Appeal should have undertaken an analysis as to whether use of the mark applied for might confer an advantage or give rise to detriment, and the argument by which it seeks to establish that such an advantage or detriment existed, must be rejected as unfounded.
81 It follows from all the foregoing considerations that, in so far as the Board of Appeal found, in essence, that the third of the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 was not fulfilled, the applicant’s second plea in law must be rejected. It should be noted in that regard, as OHIM observed and contrary to the applicant’s submissions in response to oral questions put by the Court concerning the effects of any finding that the Board of Appeal erred with regard to the reputation enjoyed by the earlier figurative mark on the lawfulness of the contested decision, that such an error does not affect the Board of Appeal’s conclusion that the third condition was not fulfilled in the present case.
82 The action must therefore be dismissed in its entirety.
Costs
83 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Arnoldo Mondadori Editore SpA to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 26 September 2014.
[Signatures]