JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
11 November 2020 (*)
(EU trade mark – Invalidity proceedings – EU word mark Lottoland – Earlier national figurative marks LOTTO and Lotto – Earlier national word mark lotto – Declaration of partial invalidity – Relative ground for refusal – No damage to reputation – No link between the marks at issue – Article 8(5) and Article 60(1)(a) of Regulation (EU) 2017/1001)
In Case T‑820/19,
Totalizator Sportowy sp. z o.o., established in Warsaw (Poland), represented by B. Matusiewicz-Kulig, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos 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
Lottoland Holdings Ltd, established in Ocean Village (Gibraltar), represented by A. Gérard, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 2 October 2019 (Case R 97/2019-4), relating to invalidity proceedings between Totalizator Sportowy and Lottoland Holdings,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, C. Iliopoulos (Rapporteur) and R. Norkus, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 December 2019,
having regard to the response of EUIPO lodged at the Court Registry on 14 February 2020,
having regard to the response of the intervener lodged at the Court Registry on 14 February 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 23 November 2012, Lottoland Ltd, the predecessor to the intervener, Lottoland Holdings Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign Lottoland.
3 The services in respect of which registration was sought are in, inter alia, Classes 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 41: ‘Education; providing of training; sporting and cultural activities’;
– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services’.
4 After a partial refusal of the application for registration, the word sign Lottoland was registered as an EU trade mark on 20 April 2017 under the number 11369981 in respect of the services referred to in paragraph 3 above.
5 On 4 October 2017, the applicant, Totalizator Sportowy sp. z o.o., filed with EUIPO an application for a declaration that the contested mark was invalid in respect of all the services for which that mark had been registered.
6 The application for a declaration of invalidity was based on the following earlier rights:
– the Polish figurative mark, as reproduced below, which was filed on 28 December 2010 and registered on 6 February 2012 under the number 244397 and covers, inter alia, services in Class 41 corresponding to the following description: ‘Arranging and conducting of lotteries and cash lotteries; recreation and sports in the field of arranging and conducting of gambling games, video lotteries and betting; production of radio and television programmes, television entertainment; arranging and conducting of concerts; amusements’:
– the Polish figurative mark, as reproduced below, which was filed on 4 June 2009 and registered on 18 August 2010 under the number 231054 and covers, inter alia, services in Class 41 corresponding to the following description: ‘Arranging and conducting of lotteries and cash lotteries; recreation and sports in the field of arranging and conducting of gambling games, video lotteries and betting; production of radio and television programmes, television entertainment; arranging and conducting of concerts; amusements’:
– the Polish word mark lotto, which was filed on 29 March 2010 and registered on 27 May 2011 under the number 243728 and covers, inter alia, services in Class 41 corresponding to the following description: ‘Arranging and conducting of numerical games and gambling; arranging and conducting of lotteries and cash lotteries, scratch lotteries, video lotteries, mutual betting, online gambling on the computer network; organizing recreational events, organizing sports events, organizing sports competitions, co-creating television entertainment programs, renting gaming machines’.
7 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and (5) of that regulation.
8 On 15 November 2018, the Cancellation Division upheld the application for a declaration of invalidity and declared the contested mark invalid in its entirety, on the ground that there was a risk that the use of the contested mark would, for the purposes of Article 8(5) of Regulation 2017/1001, take unfair advantage of the repute of the earlier Polish figurative mark registered under the number 244397.
9 On 15 January 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision.
10 By decision of 2 October 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO partially upheld the appeal and annulled the decision of the Cancellation Division in so far as it had declared the contested mark invalid in respect of all the services in Class 42, namely ‘scientific and technological services and research and design relating thereto; industrial analysis and research services’.
11 In the first place, the Board of Appeal upheld the application for a declaration that the contested mark was invalid on the basis of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, in so far as it related to the services in Class 41 and rejected that application in so far as it referred to the services in Class 42, on the ground that they were dissimilar to the services covered by the earlier marks and that, consequently, a likelihood of confusion could be ruled out. In particular, it found that, in the light of the identity or average degree of similarity between the services in Class 41, the above-average degree of visual, phonetic and conceptual similarity between the signs at issue, the normal distinctiveness of the earlier word mark and the average level of attention of the relevant public, there was a likelihood of confusion between the contested mark and the earlier word mark with regard to the services in that class.
12 In the second place, the Board of Appeal rejected the application for a declaration of invalidity on the basis of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation, on the ground that there was, as regards the services in Class 42 covered by the contested mark, no link between the marks at issue in the mind of the relevant public. In order to do so, first, it found that the earlier figurative marks had a high reputation solely for the services of ‘arranging and conducting of lotteries and cash lotteries’ in Class 41 and not for the other services in that class. Secondly, it found that the services in Class 42 covered by the contested mark were dissimilar to the services covered by the earlier marks, since they were provided by different undertakings and were aimed at different users and could not be regarded as being complementary to or in competition with each other. Thirdly, it concluded that, although the earlier figurative marks had been shown to have a high reputation in the relevant territory for some of the services in Class 41, there was, with regard to Article 8(5) of Regulation 2017/1001, no link between the marks at issue. It took the view that no different conclusion could be drawn as regards the earlier word mark. Fourthly, the Board of Appeal found that, in the absence of such a link in the mind of the relevant public, the use of the contested mark for the services in Class 42 would not take unfair advantage of, and would also not be detrimental to, the distinctive character or the repute of the earlier marks.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision in so far as it declares the contested mark to be valid for all the services in Class 42 in respect of which it was registered;
– alter the contested decision by declaring the contested mark to be invalid in its entirety, including in respect of all the services in Class 42;
– in the alternative, remit the case to EUIPO;
– order EUIPO to pay the costs of the proceedings.
14 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 It must be pointed out at the outset that the applicant relies, first, in the introductory part of the application, on a single plea in law, alleging infringement ‘of art. 60(1)(a) in conjunction with art. 8(5) of the Commission Delegated Regulation (EU) 2018/625 of 05/03/2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, repealing Delegated Regulation (EU) 2017/1430’ and, secondly, in paragraph 17 of the application, on infringement of Article 60(1)(a) of Regulation 2017/1001 read in conjunction with Article 8(5) of that regulation.
17 EUIPO submits, in essence, that that reference to Delegated Regulation 2018/625 is the result of an obvious drafting error and that the single plea in law put forward by the applicant must be interpreted as alleging infringement of the provisions of Article 60(1)(a) of Regulation 2017/1001 read in conjunction with Article 8(5) of that regulation, since the provisions with the same numbering in Delegated Regulation 2018/625 are unrelated to the ground for invalidity invoked in the present case.
18 In that regard, it is unambiguously clear from the application that the applicant intended to refer to Regulation 2017/1001. Notwithstanding the fact that the applicant refers to the full title of Delegated Regulation 2018/625, it puts forward only arguments relating to infringement, by the Board of Appeal, of the provisions of Article 60(1)(a) of Regulation 2017/1001 read in conjunction with Article 8(5) of that regulation (see, to that effect and by analogy, judgments of 31 May 2016, Jochen Schweizer v EUIPO (Du bist, was du erlebst.), T‑301/15, not published, EU:T:2016:324, paragraph 12, and of 30 January 2019, Arezzo Indústria e Comércio v EUIPO (SCHUTZ), T‑256/18, not published, EU:T:2019:38, paragraph 11).
19 It must therefore be held that the application is marred by a clerical error and that the single plea put forward must be interpreted as alleging infringement of the provisions of Article 60(1)(a) of Regulation 2017/1001 read in conjunction with Article 8(5) of that regulation.
20 The single plea consists, in essence, of two parts, alleging (i) that there a link between the marks at issue and (ii) that one of the injuries referred to in Article 8(5) of Regulation 2017/1001 exists.
21 By the first part of the single plea, the applicant submits, in essence, that the Board of Appeal made errors in its assessment of the conditions for the application of Article 8(5) of Regulation 2017/1001, as regards the finding that the relevant public would not make a link with the earlier marks. By the second part of that plea, it submits that the Board of Appeal’s finding that the contested mark would not take unfair advantage of the reputation of the earlier marks and would not be detrimental to the distinctive character or the repute of those marks is incorrect on the ground that the Board of Appeal failed to take into account the items of evidence relating to the existence of one of the injuries which is referred to by that provision. It claims that, if, in particular, the Board of Appeal had taken all those items of evidence into account, it would have had to conclude that a risk of unfair advantage which extended to all the services in respect of which the contested mark had been registered existed.
22 EUIPO and the intervener dispute the applicant’s arguments.
23 Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
24 As regards the risk referred to by Article 8(5) of Regulation 2017/1001, it must be pointed out that, although it is true that the primary function of a mark is that of an indication of origin, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys. To that effect each mark has an inherent economic value which is independent of and separate from that of the goods or services for which it is registered. The messages which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, that provision ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35, and of 8 December 2011, Aktieselskabet af 21. november 2001 v OHIM – Parfums Givenchy (only givenchy), T‑586/10, not published, EU:T:2011:722, paragraph 58).
25 It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to three conditions, namely: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) 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 trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 16 March 2016, The Body Shop International v OHIM – Spa Monopole (SPA WISDOM), T‑201/14, not published, EU:T:2016:148, paragraph 17; see also, to that effect, judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited).
26 Furthermore, according to settled case-law, the infringements referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the mark applied for and the earlier mark, by virtue of which the public concerned makes a connection between them, that is to say, establishes a link between them, even though it does not confuse them (see, to that effect, judgment of 25 May 2005, Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS), T‑67/04, EU:T:2005:179, paragraph 41 and the case-law cited; judgment of 12 November 2009, Spa Monopole v OHIM – De Francesco Import (SpagO), T‑438/07, EU:T:2009:434, paragraph 15; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 30 and the case-law cited). The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an essential condition for the application of that provision (see, to that effect, judgments of 10 May 2007, Antartica v OHIM – Nasdaq Stock Market (nasdaq), T‑47/06, not published, EU:T:2007:131, paragraph 53 and the case-law cited, and of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited).
27 It is apparent, lastly, from the case-law that whether there is a link between the marks at issue in the mind 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 the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26, and judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 21, see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42).
28 According to the case-law, it is conceivable that the relevant public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, with the result that it will not establish any link between those marks. Furthermore, even if the relevant public as regards the goods or services for which the marks at issue are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Accordingly, the nature of the goods or services for which the marks at issue are registered must be taken into consideration for the purposes of assessing whether there is a link between those marks (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 48 to 50).
29 It should also be borne in mind that the relevant public’s level of attention is likely to vary according to the category of goods or services in question. That is why the level of attention of that public is also a relevant factor for the purposes of the assessment of whether there is a link between the marks at issue (judgment of 1 March 2018, Shoe Branding Europe v EUIPO – adidas (Position of two parallel stripes on a shoe), T‑629/16, EU:T:2018:108, paragraph 31).
30 In the absence of such an association on the part 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, to that effect, order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 27 and the case-law cited).
31 It is in the light of those considerations that it is necessary to examine the merits of the single plea, alleging infringement of Article 8(5) of Regulation 2017/1001.
The similarity of the marks at issue
32 It is clear from paragraph 34 of the contested decision that the Board of Appeal found, in the context of the assessment of the likelihood of confusion pursuant to Article 8(1)(b) of Regulation 2017/1001, that the marks at issue were visually, phonetically and conceptually similar to an above-average degree.
33 The applicant does not dispute that assessment.
34 The intervener submits that the marks at issue are visually, phonetically and conceptually similar only to a low degree on account of the additional element ‘land’ in the contested mark.
35 In that context, it must be borne in mind that the existence of a similarity between the earlier mark and the contested mark is a condition for the application both of Article 8(1)(b) of Regulation 2017/1001 and of Article 8(5) of that regulation. That condition that the marks at issue must be similar presupposes, both in the context of Article 8(1)(b) and of Article 8(5), that there are, in particular, elements of visual, phonetic or conceptual similarity (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52).
36 It is true that the provisions referred to in paragraph 35 above differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood of confusion is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lower degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 53).
37 However, it is not apparent either from the wording of the provisions referred to in paragraph 35 above or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) of Regulation 2017/1001 (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 54).
38 In the present case, first, as regards the visual comparison, it must be borne in mind that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgment of 7 March 2013, FairWild Foundation v OHIM – Wild (FAIRWILD), T‑247/11, not published, EU:T:2013:112, paragraph 31 and the case-law cited). In that regard, it must be pointed out that the term ‘lotto’, which constitutes the first element in the contested mark, is the word which constitutes the earlier marks, with the result that the term ‘lotto’ is common to both marks.
39 Furthermore, it must be stated that while the element ‘land’ in the contested mark does indeed constitute an element of differentiation between the marks at issue, that difference is slight in the light of the important position which the element ‘lotto’ has in those marks. In the contested mark, that element is likely to attract the relevant public’s attention, in particular on account of its position at the beginning of that mark.
40 Consequently, it must be held, as the Board of Appeal found, that the marks at issue are visually similar to an above-average degree.
41 Secondly, as regards the phonetic similarity, in the light of the presence of the term ‘lotto’ in each of the marks at issue, it must be held, as the Board of Appeal found in paragraph 27 of the contested decision, that those marks are also similar. Contrary to what the intervener submits, the difference consisting in the addition of the element ‘land’ at the end of the contested mark does not, in the light of the element which those marks have in common, call into question the existence of an above-average degree of phonetic similarity between them (see, to that effect, judgment of 16 May 2007, La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T‑137/05, not published, EU:T:2007:142, paragraph 46 and the case-law cited).
42 Thirdly, from a conceptual standpoint, it must be stated that the parties agree that the relevant public understands the term ‘lotto’ as a reference to ‘a game in which numbers are drawn’. However, the intervener, relying on extracts from dictionaries which can be consulted on the internet, has disputed the Board of Appeal’s assessment that the word ‘land’, which is part of basic English and German vocabulary, is likely to be widely known to Polish consumers.
43 In that regard, it must be held that the word ‘land’, in the sense of ‘territory’, is part of basic German and English vocabulary and can therefore be understood by the Polish public (see, to that effect, judgments of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 53; of 11 May 2010, Wessang v OHIM – Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 52; and of 15 October 2018, Apple and Pear Australia and Star Fruits Diffusion v EUIPO – Pink Lady America (WILD PINK), T‑164/17, not published, EU:T:2018:678, paragraph 58). Consequently, as was found during the analysis that was carried out in the context of the assessment of the likelihood of confusion, the marks at issue are visually, phonetically and conceptually similar to an above-average degree.
The reputation of the earlier marks
44 In the contested decision, the Board of Appeal found that the earlier figurative marks had a high reputation solely for the services of ‘arranging and conducting of lotteries and cash lotteries’ in Class 41 and not for the other services in that class. However, it did not specifically elaborate in that decision on the reputation of the earlier word mark.
45 The applicant does not dispute the Board of Appeal’s assessments relating to the strength of the earlier figurative marks’ reputation. Moreover, there is nothing in the case file that is capable of calling such an assessment into question.
46 Consequently, it must be held that the second condition for the application of Article 8(5) of Regulation 2017/1001, which has been referred to in paragraph 25 above, is satisfied in the present case.
The first part of the single plea, alleging that there is a link between the marks at issue
47 It is apparent from paragraph 48 of the contested decision that, with regard to all of the services in Class 42 covered by the contested mark, the Board of Appeal found that, notwithstanding the high reputation of the earlier figurative marks and regardless of whether the reputation of the earlier word mark had been established, the relevant public did not establish any link between the marks at issue.
48 In that regard, in particular, after referring in paragraph 50 of the contested decision to the factors that are likely to be relevant for the purposes of the global assessment of whether there was a link between the marks at issue, the Board of Appeal, first, found that there was no indication that the relevant public would be able mentally to establish a link between the contested mark with regard to the ‘scientific and technological services and research and design relating thereto; industrial analysis and research services’ in Class 42 and the earlier marks with regard to the services of ‘arranging and conducting of lotteries and cash lotteries’ in Class 41. Secondly, it, in essence, found that the argument, put forward by the Cancellation Division, that an undertaking providing services of arranging and conducting of lotteries and cash lotteries might invest in research with regard to new products, was not sufficient to establish a relevant link between the contested services and services offering such research. Thirdly, it took the view that there was no relation between the markets for the services at issue.
49 The applicant submits that the Board of Appeal’s assessment that the relevant public will not establish any link between the marks at issue is incorrect since that assessment is based solely on the fact that the services covered by those marks are different. In particular, it complains that the Board of Appeal did not, in assessing whether there was a link between those marks for the purposes of Article 8(5) of Regulation 2017/1001, take into account all the factors relevant to the circumstances of the case, in particular the strength of the earlier marks’ reputation and the existence of bad faith on the part of the intervener, and did not take into account the items of evidence submitted for the purposes of establishing that reputation and proving that bad faith. Furthermore, it submits that the Board of Appeal made contradictory findings regarding the link between those marks. The applicant argues that, although the Board of Appeal explicitly stated that the existence of such a link had to be assessed globally, it erred in concluding, in paragraph 52 of the contested decision, that ‘in the absence of such link, the use of the contested mark [was] not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks, irrespective of what the degree of such reputation might be’.
50 EUIPO and the intervener dispute the applicant’s arguments.
51 In the present case, it must be examined whether the Board of Appeal assessed all the relevant factors which make it possible to establish whether there is a link between the marks at issue in the mind of the relevant public.
52 In that regard, the applicant confines itself to referring only to the existence of a factor on which the Board of Appeal supposedly relied in order to conclude that there was no connection between the marks at issue, namely the dissimilarity of the services at issue. However, it is clear from the contested decision that the Board of Appeal took other factors into account, such as the degree of reputation of the earlier figurative marks and the relevant public.
53 First, as regards the alleged inconsistency by which the contested decision is, in the applicant’s submission, marred, it is sufficient to point out that the applicant read that decision selectively and incorrectly. It is clear from a combined reading of paragraphs 43 to 47 and 51 of that decision that the Board of Appeal, after examining the evidence seeking to prove that the earlier marks had a reputation, found that, notwithstanding the high reputation of the earlier figurative marks, no link could be created between the marks at issue. Accordingly, in paragraph 51 of that decision, it carried out an assessment relating to the lack of any link between the marks at issue. In paragraph 52 of the contested decision, it found that, in the absence of such an association on the part of the relevant public, the use of the later mark was not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.
54 Consequently, contrary to what the applicant claims, the contested decision does not contain any contradictions.
55 Secondly, as regards the applicant’s complaint alleging that the strength of the earlier marks’ reputation and the items of evidence which it had provided in order to establish that reputation were not taken into account in the context of the assessment of whether there was a link between the marks at issue, it must be stated that that argument is based on a misreading of the contested decision. It is clear, in the first place, from the actual wording of paragraph 48 of the contested decision, which has been referred to in paragraph 47 above, that, for the purposes of its analysis, the Board of Appeal duly took into account the high reputation of the earlier figurative marks. In the second place, as EUIPO has correctly pointed out, the Board of Appeal found that it was apparent from the items of evidence provided by the applicant that those figurative marks had acquired a high reputation in Poland solely for the services of ‘arranging and conducting of lotteries and cash lotteries’ in Class 41.
56 Thirdly, it must be pointed out that all the other factors which had to be assessed as regards whether there was a link between the contested mark and the earlier marks were examined in the context of the examination of the likelihood of confusion between those marks, namely the degree of similarity between them, the degree of distinctive character of the earlier marks, which was considered to be normal, and the relevant public (see, to that effect, and by analogy, judgment of 26 June 2018, Deutsche Post v EUIPO – Verbis Alfa and EasyPack (InPost), T‑537/15, not published, EU:T:2018:384, paragraph 114).
57 As regards the relevance of the factors on which the Board of Appeal relied and the question of whether such factors make it possible, in the present case, to establish a link between the marks at issue, first of all, it must be pointed out that, in the application, the applicant does not set out any specific criticism with regard to any of those factors in the context of its arguments relating to the assessment of whether there is a link between the marks at issue.
58 Of the factors which are relevant in the global assessment seeking to establish whether there is a link between the marks at issue, it must be pointed out that, in the present case, the factors militating in favour of the existence of such a link are the similarity between those marks and the strength of the earlier figurative marks’ reputation, which can be held to be high.
59 As regards the similarity of the marks at issue, the Board of Appeal found that it was apparent from the comparison between the marks at issue that had been carried out in the context of Article 8(1)(b) of Regulation 2017/1001 that those marks were visually, phonetically and conceptually similar to an above-average degree.
60 As regards the strength of the earlier figurative marks’ reputation, the Board of Appeal specifically examined, in paragraphs 43 to 47 of the contested decision, whether the applicant had sufficiently proved that those marks had a reputation and also specifically examined the strength of such a reputation, concluding that those marks had acquired a high reputation for some of the services in Class 41, namely the services of arranging and conducting of lotteries and cash lotteries.
61 By contrast, first, the existence of two separate relevant publics and, secondly, the different nature of the services covered by the marks at issue, services which have different distribution channels and end users and are not complementary to or in competition with each other, militate against the existence of a link between those marks.
62 It must be held, in the light of the findings set out as regards the definition of the relevant public in paragraphs 23, 32 and 36 of the contested decision in the context of the examination of whether there was a likelihood of confusion between the marks at issue under Article 8(1)(b) of Regulation 2017/1001, that the services relating to the gambling games sector covered by the earlier marks are aimed at the general public, which displays an average level of attention, whereas the scientific and technological services and research and design relating thereto and industrial analysis and research services covered by the contested mark are aimed at a professional public. Consequently, it must be held that, in the present case, the publics at which the marks at issue are aimed do not overlap (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 46 and 48).
63 It must also be observed that the services for which the earlier figurative marks have a reputation are used in order to enable users to participate, in return for payment, in a game with a prize, in the hope of winning, whereas the purpose of the scientific and technological services and research covered by the contested mark, even though they may serve as a technical tool in the gambling games and betting sector, is not, in itself, either the arranging of lotteries or the pursuit of a profit by those means. Lastly, as the Board of Appeal stated, the mere fact that it is a practice of undertakings to invest in research with regard to new products is not sufficient, in the light of the general nature of that practice, to establish a link between the marks at issue.
64 Furthermore, as the Board of Appeal correctly observed in paragraphs 23 and 36 of the contested decision, it must be pointed out that, in the present case, the services at issue are also not complementary, since they are intended for different publics. In that regard, it should be noted that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, services intended for different publics cannot be complementary (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). Furthermore, since those services are intended for different publics, they cannot be regarded as substitutable one for the other or, consequently, as being in competition with each other (see, to that effect, judgment of 18 February 2011, PPTV v OHIM – Rentrak (PPT), T‑118/07, not published, EU:T:2011:58, paragraphs 39 and 40 and the case-law cited).
65 In any event, the applicant merely states, in paragraph 33 of the application, that the degree of similarity between the services concerned ‘is irrelevant as such’ without explaining in what way there is proximity between the services in Class 41 covered by its earlier marks and the services in Class 42 covered by the contested mark.
66 In circumstances such as those in the present case, it can be held that, notwithstanding the high reputation of the earlier figurative marks and the above-average degree of similarity between the marks at issue, the lack of any link between the services at issue and the difference between the relevant publics, one of which is a specialist public with a high level of attention, are such that the existence of a link between the marks at issue can be ruled out.
67 That finding cannot be called into question by the applicant’s argument that the Board of Appeal should have taken into consideration, for the purposes of assessing whether there was a link between the marks at issue, the intervener’s bad faith and the items of evidence that were put forward for the purposes of proving it. In that regard, it must be borne in mind that bad faith, as wrongful conduct, is a particularly significant factor in an application for a declaration of invalidity based on Article 59(1)(b) of Regulation 2017/1001. It is not, however, a factor that must be taken into account in the context of the relative grounds for refusal set out in Article 8 of that regulation (judgment of 17 December 2010, Amen Corner v OHIM – Comercio Electrónico Ojal (SEVE TROPHY), T‑192/09, not published, EU:T:2010:553, paragraph 77; see also, by analogy, judgment of 3 May 2012, Conceria Kara v OHIM – Dima (KARRA), T‑270/10, not published, EU:T:2012:212, paragraph 84 and the case-law cited) or the relative grounds for invalidity set out in Article 60 of that regulation.
68 It follows that the Board of Appeal was right in finding that one of the conditions for the application of Article 8(5) of Regulation 2017/1001, namely the existence of a link between the marks at issue, was not satisfied in the present case.
69 Consequently, as is clear from the case-law cited in paragraph 30 above, since the existence of a link between the marks at issue is a necessary, but not sufficient, requirement for the third condition laid down by Article 8(5) of Regulation 2017/1001 to be satisfied, there is, in the absence of such a link, no need to examine whether one of the three types of risk referred to in Article 8(5) of Regulation 2017/1001 exists. It is not therefore necessary to rule on the second part of the single plea, alleging that one of the injuries referred to in that provision exists.
70 The single plea, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation, must therefore be rejected as unfounded and the action must likewise be dismissed in its entirety as unfounded, without it being necessary to rule on whether the applicant’s third head of claim, seeking to have the case remitted to EUIPO, is admissible.
Costs
71 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.
72 Since the applicant has been unsuccessful, it 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 (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Totalizator Sportowy sp. z o.o. to pay the costs.
Marcoulli | Iliopoulos | Norkus |
Delivered in open court in Luxembourg on 11 November 2020.
E. Coulon | | M. van der Woude |