JUDGMENT OF THE GENERAL COURT (Single Judge)
1 February 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark GOOGLE CAR – Earlier EU word mark GOOGLE – Relative ground for refusal – Taking unfair advantage of the distinctive character or repute of the earlier mark – Article 8(5) of Regulation (EU) 2017/1001)
In Case T‑569/21,
Zoubier Harbaoui, residing in Paris (France), represented by A. Bove, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, M. Eberl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Google LLC, established in Mountain View, California (United States), represented by M. Kinkeldey and C. Schmitt, lawyers,
THE GENERAL COURT (Single Judge),
Judge: G. Steinfatt,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
having regard to the decision of the General Court (Third Chamber), pursuant to Article 14(3) and Article 29 of the Rules of Procedure of the General Court, to assign the case to G. Steinfatt, sitting as a single Judge,
further to the hearing on 15 September 2022,
gives the following
Judgment
1 By his action under Article 263 TFEU, the applicant, Mr Zoubier Harbaoui, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 June 2021 (Case R 904/2020-1) (‘the contested decision’).
Background to the dispute
2 On 30 October 2018, the applicant filed an application for registration of an EU trade mark in respect of the word sign GOOGLE CAR.
3 The mark applied for covered goods in Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances; Water vehicles; Cable transport apparatus and installations; Air cushion vehicles; Cars for cable transport installations; Drones; Cable transport installations; Conveying installations [ski lifts]; Conveying installations (Aerial -) for the transportation of people; Cargo carriers for vehicles; Ski lifts; Aerial conveyors; Chairlifts; Vehicles’.
4 On 12 February 2019, the intervener, Google LLC, filed a notice of opposition to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
5 The opposition was based on 13 earlier EU trade marks, including EU word mark No 1104306 GOOGLE, filed on 12 March 1999 and registered on 7 October 2005 for goods and services in Classes 9, 35, 38 and 42 and corresponding, for each of those classes, to the following description:
– Class 9: ‘Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer software; computers; computer hardware; electronic and electromechanical peripheral apparatus, all for use with computers; computer networks; computer programmes and programming languages; microprocessors; circuit boards; computer accessories; business machines; office accessories; semi-conductors; computers displays; computers monitors; video monitors; projectors; integrated circuits; storage and network controllers and devices; data recorded magnetically, electronically, or optically; instructional material relating to computers and to data, all recorded magnetically, optically or electronically; magnetic, optical and electronic data recording materials’;
– Class 35: ‘Compiling, storing, analysing and retrieving data and information; maintaining, indexing and electronically distributing information materials; creating indexes of information, websites and other information sources’;
– Class 38: ‘Telecommunications and communications services; provision of access to electronic communication networks and the Internet and extranets; arranging commercial transactions over electronic communication networks; electronic transmission of mail and messages; internet service provider services; information relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; transferring and disseminating information and data via computer networks and the Internet; providing electronic mail and workgroup communications services’;
– Class 42: ‘Computers services: consulting, design, testing, research, analysis, timesharing, technical support and other technical and advisory services, all relating to computing and computer programming: web site design, creation and hosting services; website portal services; research, development, design and upgrading of computer software; database leasing; providing access to, leasing access time to, and providing search, retrieval, indexing, linking and data organisation capabilities for the Internet, electronic communications networks and electronic databases; Internet service provider services; providing access to proprietary collections of information; website search engine services; information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; consultancy and advisory services, all relating to telecommunications and communications services, to the provision of access to electronic communication networks and the Internet and extranets, to arranging commercial transactions over electronic communication networks, to electronic transmission of mail and messages, to Internet service provider services; including such services provided online from a computer network or via the Internet or extranets; providing software interfaces available over a network in order to provide personalised access to a global computer information network for the transfer and dissemination of information in the fields of news, science, health, family, home, society, entertainment, sports, education, travel, business and financial information in the nature of text, electronic documents, databases, graphics and audiovisual information’.
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)
7 By decision of 4 March 2020, the Opposition Division upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001 in respect of all the goods referred to in paragraph 3 above.
8 On 13 May 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the First Board of Appeal of EUIPO dismissed the appeal. It found that the necessary conditions for the application of Article 8(5) of Regulation 2017/1001 were met in the present case. In the first place, the Board of Appeal found that the earlier mark GOOGLE had an extremely strong reputation linked to its information technology and on account of the fact that its internet search engine is an everyday research tool. In the second place, the Board of Appeal considered that the signs at issue had a high degree of similarity. In the third place, it found that there was a link between the marks at issue. In the fourth place, the Board of Appeal found that the use of the mark applied for was liable to take unfair advantage of the reputation of the earlier mark.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
11 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 In support of his action, the applicant raises a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001. That single plea is divided into two parts, alleging (i) incorrect assessment of the existence of a link between the marks at issue, and, (ii) incorrect assessment of the risk of unfair advantage.
The first part of the single plea, alleging incorrect assessment of the existence of a link between the marks at issue
13 The applicant has not raised any arguments capable of calling into question the Board of Appeal’s assessment that the marks at issue have a high degree of similarity. He does, however, point out that, in order to establish the existence of a link between the marks at issue, it is necessary also to examine the nature of the goods and services and their respective market sectors.
14 In the first place, first, the reputation of the earlier mark is based on search engine services, while the mark applied for covers goods in Class 12. Those goods originate from a commercial sector which is too different from the IT sector.
15 Second, the Board of Appeal’s analysis does not make it possible to establish a link for each of the goods in respect of which registration as a mark was sought. In that connection, the applicant claims that the Board of Appeal’s statement in paragraph 31 of the contested decision was based on an incorrect premiss, in that the Board limited its analysis to ‘vehicles and conveyances’ instead of taking into account in its assessment the correct list of goods covered by the mark applied for and described in paragraph 3 above.
16 The applicant relies on the case-law which states that, where marks at issue are registered for goods or services in respect of which the relevant sections of the public do not overlap, the public targeted by each of the two marks might never come across the other mark, with the result that it will not establish any link between those marks. Furthermore, the applicant submits that, according to the same case-law, even if the relevant sections of the public as regards the goods or services for which the marks at issue are registered respectively are the same or overlap to some extent, those goods or services might be so dissimilar that the later mark will be unlikely to bring the earlier mark to the mind of the relevant public.
17 In the second place, the contested decision is incorrect, in paragraph 35 in particular, in so far as the existence of a specific and different mark, WAYMO, registered and used by the intervener in connection with cars, precludes the mark applied for from bringing to the mind of consumers the idea that the goods it covers originate from the intervener.
18 EUIPO and the intervener dispute the applicant’s arguments.
19 The existence of a link between the marks at issue on the part of the relevant public must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include: the degree of similarity between the marks at issue; the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; its degree of distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 24 and the case-law cited). However, it is not necessary for there to be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 28 May 2020, Martínez Albainox v EUIPO – Taser International (TASER), T‑342/19, not published, EU:T:2020:234, paragraph 30 and the case-law cited).
20 The applicant does not challenge the reputation of the earlier mark.
21 In the first place, the applicant submits that he sought to register the mark applied for in respect of vehicles and conveyances in Class 12 while the earlier mark was registered in respect of goods and services in Classes 9, 35, 38 and 42.
22 That difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude a certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary (see judgment of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 159 and the case-law cited).
23 In addition, EUIPO is fully justified in observing that, in paragraph 34 of the contested decision, the Board of Appeal duly took into account the argument that the goods covered by the mark applied for are not similar to the goods in respect of which the earlier mark enjoys a reputation. The Board of Appeal took this finding as a starting point for its analysis of a link between the goods and services concerned, which led to the result that, despite those differences, the nature of the goods and services at issue is such that a link may be established easily between them, so that the relevant public which will be aware of Google’s reputation will accordingly associate the mark applied for with a car linked to Google, the software of which is connected to the internet.
24 The applicant’s argument that the reputation of the earlier mark is based on search engine services, not goods in Class 12 covered by the mark applied for, does not, therefore, call into question the merits of the contested decision.
25 In the second place, the applicant argues that the goods in respect of which he sought registration of the mark at issue not only include ‘vehicles and conveyances’, referred to in paragraph 31 of the contested decision, but also ‘parts and fittings for vehicles; air and space vehicles; land vehicles and conveyances; water vehicles; cable transport apparatus and installations; air cushion vehicles; cars for cable transport installations; drones; cable transport installations; conveying installations [ski lifts]; conveying installations (aerial -) for the transportation of people; cargo carriers for vehicles; ski lifts; aerial conveyors; chairlifts; vehicles’ in Class 12.
26 However, first, after having listed all the goods referred to in paragraph 3 above in paragraph 1 of the contested decision, the Board of Appeal summarised, in paragraph 7 of the contested decision, the Opposition Division’s assessment of the link between the goods covered by the marks at issue, based on ‘all types of vehicles and conveyances (land, water, air and space, drones, etc., as well as parts and fittings for them), cable transports installations, cargo carriers and lifts (ski lifts, chairlifts)’. It follows that although, in paragraph 31 of the contested decision, the Board of Appeal merely referred to the ‘goods [designated by] the contested sign (vehicles and conveyances)’, this may only be understood as a global reference to all the goods covered by the mark applied for as listed in paragraph 1 of the contested decision.
27 The Board of Appeal based its findings regarding the proximity of the goods and services on all of the contested goods in Class 12. As the intervener correctly points out, it is clear from paragraphs 32 and 34 of the contested decision, where the Board of Appeal refers to ‘goods in Class 12’ or to ‘the contested goods in Class 12’, that the Board of Appeal duly considered all of the contested goods in its assessment of whether the relevant public will establish a link between the marks at issue.
28 Second, the goods covered by the mark applied for are all part of the broader category of ‘vehicles and conveyances’, whether they are various conveyances such as air vehicles, air cushion vehicles, ski lifts or chairlifts, or parts and fittings of such vehicles and conveyances. Even goods such as drones can be used to transport objects and can be classified as conveyances.
29 In that connection, it is necessary to bear in mind, as observed by the intervener, the case-law that an examiner is not required to state reasons for the outcome of the comparison for each of the individual goods and services specified in the application for registration. Instead, general reasoning for groups of the goods concerned may be used, as long as those goods have analogous features (see, to that effect, judgments of 17 October 2013, Isdin v Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraph 26, and of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 55). In the present case, all the designated goods belong to the broader category of vehicles and conveyances or are parts and fittings for those goods, so that the Board of Appeal could merely state overall reasons for all those goods.
30 The applicant did not state in what way and to what extent those goods have different features to such an extent that it is not possible to classify them in a single category. In particular, he did not specify how the goods other than ‘vehicles and conveyances’ are distinct from those goods. Similarly, the applicant has not explained in respect of which goods and to what extent the Board of Appeal should have come to a different conclusion, if it had expressly assessed, individually and separately, each of the goods in the list of goods in respect of which registration of the mark was sought. Moreover, in his appeal before the Board of Appeal, the applicant also used the generic term ‘vehicles and conveyances’ to refer to the goods covered by the mark applied for.
31 In any event, the relevant sections of the public of the marks at issue overlap in so far as some of the goods covered by each of the marks at issue target the general public. Moreover, the Board of Appeal found, correctly and without being challenged by the applicant in that regard, that the earlier mark is known and has a considerable reputation with specialised publics in every sector, so that its finding that the general public and specialised publics will establish a link between the marks at issue is not flawed.
32 The earlier mark has a global reputation and is omnipresent in the daily lives of the general public and specialised publics in every sector, including the automotive sector, as explained by the Board of Appeal in paragraph 30 of the contested decision. As correctly noted by EUIPO, that public, when purchasing a vehicle or conveyance sold under the mark applied for, will clearly recognise the term ‘google’ and assume that the vehicles and conveyances incorporate Google technologies and tools, or that they have been developed by Google or in cooperation with Google.
33 It is therefore appropriate to reject the applicant’s argument that the Board of Appeal did not take account of all the goods designated by the mark applied for and that, owing to the differences between the goods and services covered by the marks at issue, there is no link between them.
34 In the third place, the applicant submits that the Board of Appeal did not take account of the fact that the intervener is active in the automotive sector under a different mark. He claims that that circumstance precludes the relevant public from establishing a link between the marks at issue.
35 The Board of Appeal found, in paragraph 35 of the contested decision, that the fact that the intervener has used a different name (WAYMO) for its own project in the automotive sector is irrelevant in respect of whether the relevant public will establish a link between the marks at issue. That assessment is correct. First, the mere existence of a separate mark used by the intervener in connection with its cars does not in any way affect the fact that consumers will establish a link between the signs GOOGLE CAR and GOOGLE. Moreover, the Board of Appeal correctly explained, relying on evidence produced by the intervener, that that project is commonly referred to in the press as ‘Google car’, ‘Google’s Waymo’ or ‘Google’s self-driving car’, so that consumers will necessarily establish a link between the marks at issue.
36 Accordingly, the Board of Appeal did not err in its assessment that the relevant public will establish a link between the marks at issue. The first part of the single plea must therefore be rejected.
The second part of the single plea, alleging incorrect assessment of the risk of unfair advantage
37 In the second part of the single plea, alleging incorrect assessment of the risk of unfair advantage, the applicant submits that the possibility that a trade mark might be brought to the minds of consumers does not necessarily mean that such a link affects the proprietor’s trade mark rights under Article 8(5) of Regulation 2017/1001. Moreover, the intervener’s trade mark WAYMO, covering ‘cars’ in Class 12, prevents the applicant from taking unfair advantage of the trade mark GOOGLE or from diluting the GOOGLE brand.
38 EUIPO and the intervener dispute the applicant’s arguments.
39 The risk of unfair advantage covers the situation in which the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with the reputation (see judgment of 26 September 2018, PUMA, T‑62/16, EU:T:2018:604, paragraph 21 and the case-law cited). In order to determine whether the use of the later mark takes unfair advantage of the distinctive character or the repute of the earlier mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the earlier mark, it follows from the case-law that the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it (judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 44; see also judgment of 28 May 2020, Galletas Gullón v EUIPO – Intercontinental Great Brands (gullón TWINS COOKIE SANDWICH), T‑677/18, not published, EU:T:2020:229, paragraph 121). The more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the 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 (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 67).
40 In the present case, in paragraphs 41 to 43 of the contested decision, the Board of Appeal considered that, given the more than obvious reference to the earlier mark and its extremely strong reputation, the applicant would take unfair advantage of the attractiveness of that mark.
41 The applicant submits in that regard that the possibility that a trade mark might be brought to the minds of consumers does not necessarily imply that such a link adversely affects the proprietor’s trade mark rights under Article 8(5) of Regulation 2017/1001. Nevertheless, he does not raise any specific argument to call into question the Board of Appeal’s analysis.
42 In the present case, the risk of free-riding is obvious, given that one of the two elements constituting the mark applied for is identical to the earlier mark, the reputation of which is extremely strong, and that the other element is descriptive of the goods covered by the mark applied for.
43 Regarding the applicant’s argument that the mark WAYMO owned by the intervener and covering ‘cars’ in Class 12 would prevent him from taking unfair advantage of the earlier mark, it must first be stated that that assertion is in no way supported. Second, the mere existence of an additional mark owned by the proprietor of the earlier mark cannot have the effect of reducing or even eliminating the risk of free-riding to the detriment of the earlier mark, where the relevant public will establish a link between the marks at issue.
44 Given the similarities between the marks at issue and the link which the relevant public will establish between those marks, the mark applied for carries a risk of benefiting from the attractiveness of the earlier mark, which is part of many aspects of the daily life of consumers.
45 Accordingly, the Board of Appeal did not err in finding that use of the mark applied for carries a risk of taking unfair advantage of the reputation of the earlier mark by unfairly benefiting from its attractiveness. The second part of the applicant’s single plea must, accordingly, be rejected.
46 Having regard to all the foregoing considerations and given that none of the two parts of the single plea raised by the applicant in support of the form of order sought is to be upheld, the action must be dismissed.
Costs
47 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
48 Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Single Judge)
hereby:
1. Dismisses the action;
2. Orders Mr Zoubier Harbaoui to pay the costs.
Delivered in open court in Luxembourg on 1 February 2023.
E. Coulon | | M. van der Woude |