JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
17 January 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU work mark TURBO-K — Earlier non-registered marks TURBO-K — Relative ground for refusal — Use of a sign in the course of trade of more than mere local significance — Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) — Rules governing common-law actions for passing-off — Goodwill)
In Case T‑671/17,
Turbo-K International Ltd, established in Birmingham (United Kingdom), represented by A. Norris and A. Muir Wood, Barristers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Turbo-K Ltd, established in Winchester (United Kingdom), represented by O. van Haperen, lawyer, T. St Quintin, Barrister,and E. Morris, Solicitor,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 14 July 2017 (Case R 2135/2016‑2), relating to opposition proceedings between Turbo-K and Turbo-K International,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni (Rapporteur), President, L. Madise and R. da Silva Passos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 September 2017,
having regard to the response of EUIPO lodged at the Court Registry on 21 December 2017,
having regard to the response of the intervener lodged at the Court Registry on 22 December 2017,
having regard to the cross-claim of the intervener lodged at the Court Registry on 22 December 2017,
having regard to the response of the applicant to the cross-claim lodged at the Court Registry on 26 March 2018,
having regard to the response of EUIPO to the cross-claim lodged at the Court Registry on 26 March 2018,
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 13 November 2014, the applicant, Turbo-K International 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 trade mark was sought for the word mark TURBO-K.
3 The goods and services for which registration was sought fall within Classes 1, 3 and 35 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, in relation to each of those classes, to the following description:
– Class 1: ‘Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; solvent-based cleaning preparations; solvent-based cleaning preparations for cleaning jet engines; solvent-based cleaning preparations for cleaning industrial machines; degreasing preparations, surface active agents; soaps used in industry; antifreeze preparations; preservation agents, particularly for machines; chemical additives for fuels and combustibles; chemical additives for oils and alternative fuels; emulsifying agents; precipitation agents for crude oil and fuels; demulsifying agents; dispersion agents; agents for lipolysis; oleic acids; fatty acids from oils; chemical additives to fungicides and biocides; metal salts; silicone; oxalate; chemical combustion catalysts’;
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cleaning fluids; cleaning fluids for cleaning jet engines; washing and cleaning products; washing and cleaning fluids and oils for cleaning purposes, particularly for machines; water and solvent based washing and cleaning preparations; polishing preparations; rust-removing preparations; degreasing preparations, other than for use in manufacturing processes; detergents, other than for use in manufacturing processes and other than those for medical purposes; dry-cleaning preparations; solvents and other substances for cleaning; washing and cleaning preparations’;
– Class 35: ‘Advertising, business management, business administration, office functions; retail services in connection with chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, unprocessed artificial resins, unprocessed plastics, manures, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesives used in industry; retail services in connection with solvent-based cleaning preparations, solvent-based cleaning preparations for cleaning jet engines, solvent-based cleaning preparations for cleaning industrial machines, washing and cleaning preparations, degreasing preparations, surface active agents, soaps used in industry, antifreeze preparations, preservation agents, particularly for machines, chemical additives for fuels and combustibles, chemical additives for oils and alternative fuels; retail services in connection with emulsifying agents, precipitation agents for crude oil and fuels, demulsifying agents, dispersion agents, agents for lipolysis, oleic acids, fatty acids from oils, chemical additives to fungicides and biocides, metal salts, silicone, oxalate, chemical combustion catalysts, bleaching preparations and other substances for laundry use; retail services in connection with cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cleaning fluids, cleaning fluids for cleaning jet engines; retail services in connection with washing and cleaning products, washing and cleaning fluids and oils for cleaning purposes, particularly for machines, water and solvent based washing and cleaning preparations, polishing preparations, rust-removing preparations, degreasing preparations, other than for use in manufacturing processes; retail services in connection with soaps, detergents, other than for use in manufacturing processes and other than those for medical purposes, dry-cleaning preparations, solvents and other substances for cleaning.’
4 The EU trade mark application was published in Community Trade Marks Bulletin No 2014/228 of 3 December 2014.
5 On 25 February 2015, the intervener, Turbo-K Ltd, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following marks, which were indicated simultaneously as being non-registered trade marks, trade names and company names, which the intervener claimed to have used for a number of goods and services:
– the word mark TURBO-K;
– the figurative mark reproduced as follows:
7 The ground relied on in support of the opposition was that set out in Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001).
8 According to the intervener, the earlier marks mentioned in paragraph 6 above had been used in the course of trade in the Netherlands and the United Kingdom and were, in both countries, of more than mere local significance.
9 On 20 September 2016, the Opposition Division upheld the opposition in part. It refused registration of the mark applied for in respect of certain goods and services in Classes 1, 3 and 35 and granted registration for the other goods.
10 As regards the use of the earlier marks in the course of trade in the United Kingdom, the Opposition Division found that the intervener had established that the earlier marks had been used in the course of trade of more than mere local significance for a gas turbine compressor cleaner (‘the product at issue’), before the date on which the application for registration of the mark applied for had been filed.
11 Next, the Opposition Division found, first, that the intervener had acquired goodwill (the attractive force which brings in custom) as regards the earlier marks in the mind of the purchasing public. In that regard, it took the view that the contractual agreements submitted by the applicant ( ‘the contractual agreements’) contained no reference to the mark TURBO-K, did not show that the parties to those agreements had an agreement covering the earlier marks and, consequently, did not call into question the acquisition of goodwill by the intervener.
12 The Opposition Division considered, second, that there was a risk of misrepresentation. It found that the earlier word mark TURBO-K was identical to the mark applied for, that certain goods and services covered by the mark applied for, in Classes 1, 3 and 35, were identical or similar to the goods at issue, and that, as a result, there was a risk that the intervener’s customers might perceive those goods and services, offered by the applicant under the mark applied for, as being those of the intervener. The Opposition Division found that, even though the applicant had provided evidence of use of the mark applied for, it had not demonstrated that the simultaneous use of that sign by the applicant and the intervener was based on the absence of any confusion on the part of the relevant public and that, on the contrary, the simultaneous use of that sign for identical or similar goods was liable to mislead consumers.
13 Third, the Opposition Division found that the intervener was likely to suffer damage as a result of the use by the applicant of the mark applied for.
14 Finally, the Opposition Division concluded, as regards the use of the earlier marks in the course of trade in the United Kingdom, that the opposition was well founded only as regards the goods and services, covered by the mark applied for, that were identical or similar to the product in question.
15 As regards the use of the earlier marks in the course of trade in the Netherlands, the Opposition Division held, by contrast, that the opposition could not succeed, since the intervener had not submitted sufficient information on the applicable national legislation, in accordance with Rule 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 7 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)).
16 On 21 November 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
17 On 30 March 2017, the intervener filed a cross-appeal with EUIPO against the Opposition Division’s decision. The intervener requested that the Board of Appeal, first, annul the decision of the Opposition Division, in so far as the latter had rejected the opposition based on the law of the Netherlands, and, second, uphold in its entirety the opposition based on the law of the United Kingdom.
18 By decision of 14 July 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the applicant’s appeal in part. It annulled the decision of the Opposition Division in so far as it had rejected the application for registration of the mark applied for in regard to ‘chemicals used in photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; chemical substances for preserving foodstuffs; manures; adhesives used in industry; chemical additives for fuels and combustibles; chemical additives for alternative fuels; precipitation agents for fuels’ in Class 1 and ‘dry-cleaning preparations’ in Class 3. It accordingly allowed registration of the mark applied for in respect of those goods. Furthermore, it dismissed the intervener’s cross-appeal.
19 As regards the use of the earlier marks in the course of trade in the United Kingdom, the Board of Appeal upheld the finding of the Opposition Division by taking the view that those marks had been used in the course of trade of more than mere local significance, before the date on which the application for registration of the mark applied for had been filed (paragraphs 32 to 43 of the contested decision). It also confirmed that the intervener enjoyed goodwill as regards the earlier marks (paragraphs 46 to 54 of that decision), that there was misrepresentation when the signs at issue were used for goods and services which were identical or similar to the product at issue (paragraphs 55 to 57 of that decision) and that the risk of damage to the intervener’s goodwill was established (paragraph 58 of that decision). It considered, however, that the goods referred to in paragraph 18 above were not identical or similar to the product at issue, that there could be no misrepresentation or damage to the intervener’s goodwill in that regard and, consequently, that the mark applied for could be registered for those goods (paragraphs 64 and 65 of the contested decision).
20 As regards the use of the earlier marks in the course of trade in the Netherlands, the Board of Appeal took the view that the ground of the Opposition Division’s decision according to which the intervener had not submitted the evidence required by Rule 19 of Regulation No 2868/95 was ‘highly debatable’, but that, even though the intervener had rights under the law of the Netherlands to oppose the registration of the mark applied for, the opposition based on the law of the Netherlands would be upheld, at most, to the same extent as that based on the law of the United Kingdom. It concluded that it was therefore unnecessary, in the interest of procedural economy, to examine the particulars of that ground of opposition (paragraphs 67 to 73 of the contested decision).
Forms of order sought
21 The applicant claims that the Court should:
– annul the contested decision;
– reject the objections to registration of the mark applied for;
– rule on costs.
22 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO.
23 The intervener contends that the Court should:
– dismiss the action for the reasons given by the Second Board of Appeal and, in the alternative, because of the intervener’s earlier rights in the Netherlands;
– order the applicant to pay the costs.
24 In the cross-claim lodged under Article 182 of the Rules of Procedure of the General Court, the intervener claims that the Court should:
– annul the contested decision only with regard to the Board of Appeal’s conclusion that there was no need to examine the particulars of the ground of opposition based on Article 8(4) of Regulation No 207/2009 in the context of the law of the Netherlands;
– examine the opposition based on the law of the Netherlands and declare that the opposition is successful in that regard;
– rule on the costs relating to the cross-claim and order the applicant to pay the costs incurred by the intervener.
25 In its written observations on the cross-claim, EUIPO contends that the Court should:
– dismiss the cross-claim;
– order the intervener to pay the costs.
26 In its observations on the cross-claim, the applicant contends that the Court should:
– dismiss the cross-claim;
– order the intervener to pay the costs incurred by the applicant in relation to the cross-claim.
Law
The main action
27 The applicant raises a single plea in law, alleging that the Board of Appeal infringed Article 8(4) of Regulation No 207/2009 as regards the use of the earlier marks in the course of trade in the United Kingdom.
28 In the first place, the applicant submits that the Board of Appeal failed properly to examine the contractual agreements. In its view, if the Board of Appeal had taken proper account of that evidence, it would have found that the intervener was only one of the distributors of the product at issue sold under the earlier marks.
29 In the second place, the applicant argues that the Board of Appeal erred in holding that the intervener had exclusive goodwill linked to the earlier marks. In its opinion, although the intervener did indeed sell the product at issue under the earlier marks, a third party, Lach Dennis Consultants Ltd, was the owner of the formulation (that is to say, the chemical composition of that product) and owned the goodwill. If it is assumed that that third party cannot be regarded as the owner of the goodwill, the applicant considers that the goodwill linked to the earlier marks was shared among the distributors of that product.
30 In the third place, the applicant submits that the Board of Appeal erred in finding that misrepresentation was established. The Board of Appeal, which did not take proper account of the contractual agreements, was, in its view, wrong to conclude that there was misrepresentation even though the goodwill was shared among several distributors.
31 EUIPO and the intervener contend that that claim must be rejected.
32 Under Article 8(4) of Regulation No 207/2009:
‘Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the [EU] legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the [EU] trade mark, or the date of the priority claimed for the application for registration of the [EU] trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’
33 Pursuant to Article 8(4) of Regulation No 207/2009, the proprietor of a non-registered trade mark may oppose the registration of an EU mark if that non-registered trade mark satisfies four cumulative conditions. The non-registered trade mark must be used in the course of trade; it must be of more than mere local significance; the right to that mark must have been acquired pursuant to the law of the Member State in which the mark was used, prior to the date of application for registration of the EU trade mark; lastly, that mark must confer on its proprietor the right to prohibit the use of a subsequent trade mark. While the first two conditions must be interpreted in the light of EU law, the last two are to be assessed in the light of the law governing the sign concerned (see, to that effect, judgment of 18 July 2017, Alfonso Egüed v EUIPO — Jackson Family Farms (BYRON), T‑45/16, EU:T:2017:518, paragraphs 23 to 27).
The contractual agreements
34 In paragraphs 28 to 31 of the contested decision, the Board of Appeal examined from the outset the relevance of the contractual agreements in order to challenge the merits of the opposition. It took the view that those agreements involving the applicant, the intervener and third parties were not, as the Opposition Division had already found, a determining factor in the opposition proceedings, since those agreements did not mention any mark, but only a ‘formulation’ and technical knowledge.
35 The applicant maintains that the Board of Appeal did not examine the contractual agreements properly and mistook a third party, the company Turbo-K (UK) Ltd, for the intervener. In the applicant’s view, had the Board of Appeal properly taken that evidence into account, it would have found that Lach Dennis Consultants was the proprietor of the formulation and that the intervener was only one of the distributors of the product at issue.
36 The applicant’s argument cannot, however, be accepted.
37 It is true that the Board of Appeal erred, in paragraphs 29 and 30 of the contested decision, in mentioning that the intervener was a signatory to two of the contractual agreements, namely the agreement of 1 November 1997 and the confidentiality agreement of 21 March 2002, whereas those agreements had been signed by another company, Turbo-K (UK).
38 However, the Board of Appeal’s confusion between the intervener and Turbo-K (UK) has no effect on the legality of the contested decision.
39 It follows from settled case-law that an incorrect ground need not lead to annulment of the measure thereby vitiated if it is superfluous and there are other grounds which provide a basis for that measure (see judgments of 20 September 2012, France v Commission, T‑154/10, EU:T:2012:452, paragraph 99 and the case-law cited, and of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 27 and the case-law cited).
40 It is apparent from paragraphs 28 to 31 of the contested decision that the Board of Appeal relied essentially, in the same way as the Opposition Division, on the content of the contractual agreements in order to hold that those agreements did not affect the merits of the opposition. The Board of Appeal thus considered that those agreements, in particular those of 1 November 1997 and of 21 March 2002, related to a formulation and did not concern the parties’ rights in regard to the earlier marks.
41 In doing so, the Board of Appeal did not err. Contrary to what the applicant claims, the contractual agreements cannot be interpreted as meaning that the reference to the formulation refers to the earlier marks. In particular, none of those agreements relates to the goodwill linked to the sale of the product at issue under the earlier marks.
42 In those circumstances, the Board of Appeal acted correctly in concluding that, in view of their content, the contractual agreements were not a decisive factor in the present case.
43 Furthermore, the claims which the applicant seeks to draw from the contractual agreements are not established.
44 First, the fact that Lach Dennis Consultants had, as the contractual agreements show, intellectual property rights in the formulation does not confer on it any right in relation to the earlier marks used by the intervener in the activity of selling the product at issue.
45 It is, admittedly, apparent from the documents in the file that a natural person developed the formulation and licensed the intellectual property rights in that formulation to Lach Dennis Consultants. The latter, which intended to act as a consultant to various undertakings, signed inter alia, on 17 June 2011, an exclusive licence with the applicant for the use of the formulation. However, no document in the file demonstrates that Lach Dennis Consultants, which has never carried out any activities relating to the sale of the product at issue, had rights in the earlier marks. A fortiori, the applicant does not establish, by referring to those agreements, that Lach Dennis Consultants was the exclusive proprietor of such rights, depriving the intervener of the possibility of relying on them in support of its opposition.
46 Second, it is common ground that the intervener marketed the product at issue in the United Kingdom for many years before the date on which the application for registration of the mark applied for was filed.
47 In that regard, while it is true that Midland Chemicals manufactured, packaged and dispatched the product at issue on behalf of the intervener, the applicant’s assertion that the intervener had only a role as distributor has not been demonstrated. On the contrary, the agreement of 17 February 1999 between the intervener and Midland Chemicals stated, as EUIPO correctly points out, that it was the intervener that disclosed the formulation to Midland Chemicals, since the latter was not authorised to make alternatives to the formulations mixing procedures or test methods without the written consent of the intervener.
48 Third, it has not been established that Turbo-K (UK) was one of the distributors of the product at issue, manufactured by Midland Chemicals. The documents submitted by the applicant, in particular the confidentiality agreement of 21 March 2002, do not show that Turbo-K (UK) actually sold that product under the earlier marks. As EUIPO correctly points out, the applicant has not submitted any invoice, labels, advertisement or any other business document to that effect. The applicant’s argument relating to the alleged activity of Turbo-K (UK) as regards the earlier marks has therefore no basis in fact.
49 Fourth, although the applicant sold, under the earlier marks, the product at issue, manufactured by Midland Chemicals, it must be noted, as EUIPO correctly points out, that it has produced, in respect of customers in the United Kingdom and for the period preceding the date of filing of the application for registration of the mark applied for, only two invoices dated 16 and 29 October 2014. Thus, its activity selling that product under the earlier marks in the United Kingdom started several years after that of the intervener and shortly before the date on which the application for registration of the mark applied for was filed. It is therefore not capable of showing that the intervener was deprived of the possibility of relying on the earlier marks in support of its opposition.
50 Consequently, the applicant is not justified in maintaining that it follows from the contractual agreements that Lach Dennis Consultants had rights in respect of the earlier marks and that the intervener was only one of the distributors of the product at issue.
51 It follows that the applicant’s arguments alleging that the Board of Appeal did not properly examine the contractual agreements must be rejected.
Use of the signs in the course of trade of more than mere local significance in the United Kingdom
52 In order to be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of that sign as a distinctive element vis-à-vis its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraphs 159 and 160).
53 In paragraphs 32 to 44 of the contested decision, the Board of Appeal found that the condition relating to use of the earlier trade marks in the course of trade of more than mere local significance in the United Kingdom was satisfied. It confirmed the findings of the Opposition Division, according to which, in the light of the evidence in the file, namely, inter alia, 38 invoices addressed to customers in the United Kingdom during the period from 1998 to 2014, screenshots of the intervener’s websites, discussions and emails, brochures, material safety sheets, export documents, advertisements, an approval certificate and testimonials, first, the intervener had used, in the course of those years, the earlier marks in order to identify its goods and, second, that that use in the course of trade was of more than mere local significance, concerned the product at issue and was earlier than the date of filing of the application for registration of the mark applied for.
54 Those findings, which are not disputed by the applicant, must be approved.
Application of United Kingdom law
55 The law of the Member State applicable to the non-registered trade mark in the context of United Kingdom law is the Trade Marks Act 1994 (‘the Trade Marks Act’), section 5(4) of which provides:
‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –
(a) by virtue of any rule of law (in particular, the law of passing-off) protecting an unregistered trade mark or other sign used in the course of trade ...’
56 Under section 5(4) of the United Kingdom Act, as interpreted by the national courts (decision of the House of Lords, Reckitt & Colman Products Ltd v Borden Inc. [1990] R.P.C. 341, 406 HL), the opponent must establish, in accordance with the legal rules governing actions for passing-off, as laid down by the law of the United Kingdom, that three conditions are satisfied: namely, first, the goodwill acquired by the non-registered trade mark or the sign at issue, second, misrepresentation by the proprietor of the subsequent mark and, third, damage caused to that goodwill (see judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraph 43 and the case-law cited).
– Acquisition of goodwill
57 It is apparent from national case-law that the property protected by an action for passing-off is not property in a word or name, which third parties are restrained from using, but the very customer base which is undermined by the usage in question (Lord Parker in the High Court (Chancery Division) decision Burberrys v J.C. Cording & Co. Ltd [1909] 26 R.P.C. 693), since the reputation of a trade mark is the power of attraction which brings in custom and the criterion which distinguishes an established business from a new business (Lord Macnaghten in the decision of the House of Lords, Inland Revenue Commissioners v Muller & Co’s Margarine [1901] A.C. 217, 223 HL), as already noted by the Court (judgment of 11 June 2009, Last Minute Network v OHIM — Last Minute Tour (LAST MINUTE TOUR), T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 61).
58 Goodwill is normally proved by evidence of, inter alia, trading activities, advertising, and customers’ accounts. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill (see judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraph 49 and the case-law cited).
59 In the present case, the Board of Appeal correctly found, in paragraph 52 of the contested decision, that the Opposition Division’s findings that the intervener had acquired goodwill with respect to the earlier marks were not vitiated by error. It is apparent from the documents in the file that the intervener had been conducting for many years, at the date of filing of the application for registration of the trade mark applied for, genuine trading activities relating to the sale of the product at issue under the earlier marks, and that those activities had generated significant sales and had resulted in an increase in the customer base.
60 The applicant’s arguments do not call that finding into question.
61 In the first place, the applicant submits that, had the Board of Appeal properly examined the contractual agreements, it would have found that Lach Dennis Consultants was the owner of the goodwill linked to the earlier marks. In this respect, the applicant considers that the Board of Appeal erred in finding that the applicant appeared to concede that the intervener owned goodwill.
62 First, the applicant is not justified in criticising the Board of Appeal for finding, in paragraph 49 of the contested decision, that the applicant appeared to concede that the intervener owned goodwill. The applicant had stated, in paragraph 5 of its grounds of appeal before the Board of Appeal dated 20 January 2017, that, if the Opposition Division had assessed the evidence properly, it would have recognised that, in so far as the intervener owned goodwill, it did not own it ‘exclusively’ and that it was clear that the applicant also enjoyed goodwill. Although it is true that, in the continuation of the grounds of appeal, the applicant claimed that the goodwill linked to the earlier marks was owned by Lach Dennis Consultants, it cannot criticise the Board of Appeal for having interpreted its pleadings as meaning that the applicant appeared to concede from the outset that the intervener owned goodwill. In any event, it must be held that the Board of Appeal properly ruled, in paragraph 52 of the contested decision, on the question of whether the intervener had goodwill linked to those marks.
63 Second, the applicant is not justified in maintaining that, had the Board of Appeal properly examined the contractual agreements, it would have found that Lach Dennis Consultants was the owner of the goodwill linked to the earlier marks. As has been stated in paragraph 50 above, those agreements do not support an inference that Lach Dennis Consultants had rights in the earlier marks.
64 In that regard, it should be recalled that, under United Kingdom law, the factors which influence the ownership of goodwill are as follows: who is responsible for the quality of the goods and who is perceived by the public as being responsible (decision of the House of Lords, T. Oertli A.G. v E.J. Bowman (London) LD. and Others [1959] R.P.C. 1, 7 HL), as the Court has already noted (judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraph 106).
65 It is apparent from the documents in the file, as EUIPO correctly points out, that Lach Dennis Consultants intended to act as a consultant to various undertakings in the supply of the formulation, whereas the intervener, which sold the product at issue in the United Kingdom for many years, had primary responsibility for quality and was in all likelihood seen as such by its customers.
66 The fact that the intervener had the product at issue manufactured, labelled and dispatched to its customers by Midland Chemicals does not call that finding into question. While the name of the director of Midland Chemicals appeared on the safety data sheets drawn up by the intervener under an emergency telephone number, it was indeed the intervener that was described in those documents as having primary responsibility for quality.
67 In the second place, the applicant maintains that the Board of Appeal erred in law in concluding, in paragraph 53 of the contested decision, that it was sufficient to establish that the intervener enjoyed goodwill. It states that, on the assumption that Lach Dennis Consultants did not hold the goodwill linked to the earlier marks, the Board of Appeal ought to have inferred from the contractual agreements that the intervener’s goodwill was shared with the other distributors.
68 However, the Board of Appeal did not err in law in concluding, at the stage of the examination of the condition relating to the acquisition of goodwill, that it was sufficient to establish that the intervener enjoyed goodwill.
69 As EUIPO correctly maintains, it is not apparent from the national case-law that the claimant in an action for passing-off must demonstrate that it is the sole owner of the goodwill. On the contrary, it cannot be ruled out that, in certain circumstances, the goodwill may be shared by multiple entities, for example in the case of unincorporated business associations (Williams and Williams v Canaries SeaSchool Slu (Club Sail Trade Marks) [2010] R.P.C. 32(Geoffrey Hobbs QC, Appointed Person)).
70 As the Board of Appeal rightly found, the applicant had, furthermore, not cited any case-law in support of its argument. The extracts from national case-law referred to by the applicant in its action before the Court (decision of the House of Lords, Reckitt & Colman Products Ltd v Borden Inc. [1990] R.P.C. 341, 406 HL) highlight the condition that the earlier sign must be distinctive, but do not show that the claimant in an action for passing-off must establish that it is the exclusive owner of the goodwill.
71 In any event, the applicant cannot justifiably argue that the Board of Appeal should have inferred from the contractual agreements that the intervener’s goodwill was shared with the other distributors. As has been stated in paragraph 50 above, it is not established that the intervener was only one of the distributors of the product at issue. Consequently, the applicant’s argument that several distributors, including Turbo-K (UK) and the applicant, shared with the intervener the goodwill in the earlier marks must be rejected.
72 It follows from the foregoing that the Board of Appeal acted correctly in finding that the intervener had, at the date of filing of the application for registration of the mark applied for, acquired goodwill linked to the earlier marks.
– Misrepresentation
73 According to the national case-law, misrepresentation by a defendant in an action for passing-off, whether or not it is intentional, is a representation which is likely to lead the claimant’s customers to attribute to it the commercial origin of the goods and services offered by the defendant (decision of the House of Lords, Reckitt & Coleman Products Ltd v Borden Inc. [1990] R.P.C. 341, 406 HL), as already noted by the Court (judgment of 11 June 2009, LAST MINUTE TOUR, T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 92).
74 In paragraphs 55 to 57 of the contested decision, the Board of Appeal upheld the finding of the Opposition Division that misrepresentation was established. In particular, it found that the mark applied for was identical, or almost identical, to the earlier marks and that misrepresentation was established when the signs at issue were used for identical or similar goods and services.
75 The applicant takes issue with that finding. It claims that the Board of Appeal could not rule on the existence of misrepresentation without answering the question as to which companies owned goodwill and that, since the goodwill was shared among the distributors, there could not be any misrepresentation.
76 That argument cannot be accepted.
77 First of all, although the applicant takes the view that the Board of Appeal could not rule on the existence of misrepresentation without examining which companies owned goodwill, it should be noted that that Board properly ruled on the acquisition of goodwill by the intervener and did not err in law, as has been stated in paragraphs 68 to 70 above, in finding, in paragraph 53 of the contested decision, that it was sufficient to establish that the intervener enjoyed goodwill linked to the earlier marks.
78 Moreover, as has been stated in paragraph 71 above, the applicant cannot justifiably argue that the Board of Appeal should have inferred from the contractual agreements that the goodwill of the intervener was shared with the other distributors.
79 It should be added that the defendant to an action for passing-off can furnish proof of use of the mark on the basis of its own goodwill acquired independently of the applicant in an action for passing-off, by an honest concurrent use of that mark (S. Foster & Son Ltd v Brooks Brothers UK Ltd [2013] EWPCC 18 (21 March 2013)).
80 As EUIPO notes, the present case does not correspond to the situation in which an action for passing-off can be ruled out because of concurrent goodwill. The activity of the applicant under the earlier marks in the United Kingdom started several years after that of the intervener and, moreover, shortly before the date of filing of the application for registration of the mark applied for, as has been stated in paragraph 49 above, with the result that the applicant, which has not demonstrated concurrent use of that mark, has not shown that it acquired its own goodwill. On the contrary, the applicant’s use of the mark applied for, which is identical or similar to the earlier marks, was liable to lead the intervener’s customers to attribute to it the commercial origin of the goods and services offered by the applicant.
81 In those circumstances, the Board of Appeal acted correctly in holding that misrepresentation had been demonstrated.
– Damage to goodwill
82 It must be pointed out that, in the context of an action for passing-off, the claimant is not obliged to prove that it has suffered damage. It is sufficient that damage is likely. A misrepresentation which leads the relevant public to believe that the goods of the defendant to an action for passing-off are those of the claimant to that action is intrinsically likely to damage the claimant if the fields of business of the claimant and defendant are reasonably close (see, to that effect, judgment of 9 December 2010, Trespin Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraphs 147 and 148).
83 The Board of Appeal found, in paragraph 58 of the contested decision, that, since goodwill and misrepresentation had been established, it had to be assumed that the intervener would suffer harm, given the identity of the mark applied for and the earlier word mark TURBO-K and the fact that the relevant public would not be able to determine whether the goods and services provided by each of them came from the intervener or from the applicant.
84 In the absence of arguments put forward by the applicant, the Board of Appeal’s finding that damage had been caused to the goodwill must be upheld.
85 It follows from all of the foregoing that the Board of Appeal was right to conclude that the conditions of an action for passing-off and those of Article 8(4) of Regulation No 207/2009 were met and that, consequently, the single plea raised by the applicant must be rejected.
86 The applicant’s action must therefore be dismissed.
The cross-claim
87 In the cross-claim, the intervener maintains that the Board of Appeal erred in taking the view that it was not necessary to examine the particulars of the use of the earlier marks in the course of trade in the Netherlands. It claims in particular that it has an interest in obtaining (at least) the same outcome on the basis of the law of the Netherlands. In particular, it submits, the outcome of that examination would directly affect the possible conversion, on the basis of Articles 139 and 140 of Regulation 2017/1001, of the EU trade mark application into a national trade mark application in the Netherlands, a country in which the intervener has significant activities.
88 EUIPO submits that the cross-claim is inadmissible. It contends in particular that it is common ground that the opposition based on the law of the Netherlands would succeed, in any event, at most to the same degree as the opposition based on the law of the United Kingdom and that, as a result, the intervener is not in a situation in which its claims have been adversely affected by the contested decision.
89 The applicant disputes the merits of the argument made by the intervener in the cross-claim.
90 Under Article 65(4) of Regulation No 207/2009 (now Article 72(4) of Regulation 2017/1001),an action before the Court against a decision of a Board of Appeal of EUIPO is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’. In addition, according to settled case-law, an applicant’s interest in bringing proceedings constitutes the essential prerequisite for any legal proceedings and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which it will be inadmissible. The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it (see judgment of 25 September 2015, Copernicus-Trademarks v OHIM — Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 27 and the case-law cited).
91 A decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board, when it grants the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even where it does not examine or where it dismisses the other grounds or arguments raised by that party (see judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 28 and the case-law cited).
92 In the present case, the intervener seeks, by its cross-claim, first, the annulment of the contested decision only with regard to the Board of Appeal’s finding that there was no need to examine the particulars of the ground of opposition based on the law of the Netherlands and, second, the examination of that ground and a declaration that the opposition must be upheld in that regard.
93 However, by not examining the particulars of the merits of the ground of opposition based on the use of the earlier trade marks in the course of trade in the Netherlands, the Board of Appeal did not refuse to uphold the intervener’s claims. As is apparent from paragraphs 71 to 73 of the contested decision, the Board of Appeal found that, even though the intervener had rights under the law of the Netherlands to oppose the registration of the mark applied for, the opposition based on that legislation would be upheld, at most, to the same extent as that based on the law of the United Kingdom, namely only as regards the goods and services covered by the mark applied for which are similar to the product at issue. Those findings are, moreover, not contested by the intervener.
94 It follows, admittedly, from Regulation No 207/2009, and in particular from Article 112(1)(a) thereof (now Article 139(1)(a) of Regulation 2017/1001), that ‘the applicant for or proprietor of a[n EU] trade mark may request the conversion of his [EU] trade mark application or [EU] trade mark into a national trade mark application: (a) to the extent that the [EU] trade mark application is refused, withdrawn, or deemed to be withdrawn ...’.
95 Similarly, as the intervener claims, the grounds for refusal of the application for an EU trade mark determine whether that application can be registered at national level. Article 112(2)(b) of Regulation No 2017/1001 (now Article 139(2)(b) of Regulation 2017/1001) provides that conversion is not to take place for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the EU trade mark application or EU trade mark (judgment of 16 September 2004, Metro-Goldwyn-Mayer Lion v OHIM — Moser Grupo Media (Moser Grupo Media), T‑342/02, EU:T:2004:268, paragraph 40).
96 However, conversion of an EU trade mark application into a national trade mark application is merely optional for an applicant for an EU trade mark. Nor does the conversion procedure confer on applicants the right to have their applications registered by the competent national authorities. Instead, the decision on any national registration is left to the competent national authorities since opposing parties have the opportunity to assert their rights before those national authorities (judgment of 16 September 2004, Moser Grupo Media, T‑342/02, EU:T:2004:268, paragraph 41).
97 Moreover, there is nothing to prevent an applicant whose EU trade mark application has been refused following opposition proceedings from filing similar applications with national authorities without having recourse to the conversion procedure (judgment of 16 September 2004, Moser Grupo Media, T‑342/02, EU:T:2004:268, paragraph 42).
98 Consequently, irrespective of the significance of the intervener’s economic activity in the Netherlands, the fact remains that the interest which it claims, namely the risk that the applicant might request the conversion in that country of the application for registration of the mark applied for into an application for a national trade mark, concerns a future and uncertain legal situation (see, to that effect, judgment of 16 September 2004, Moser Grupo Media, T‑342/02, EU:T:2004:268, paragraphs 43 and 44 and the case-law cited)
99 It follows from the foregoing considerations that the cross-claim, if successful, would not be likely to procure, by its outcome, any advantage for the intervener.
100 The intervener’s cross-claim must therefore be dismissed as inadmissible.
Costs
101 Under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.
102 Since the applicant and the intervener have been unsuccessful, they must each be ordered to pay half the costs of EUIPO and each to bear their own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Dismisses the cross-claim as inadmissible;
3. Orders Turbo-K International Ltd and Turbo-K Ltd each to bear their own costs and each to pay half of the costs incurred by the European Union Intellectual Property Office (EUIPO).
Gervasoni | Madise | da Silva Passos |
Delivered in open court in Luxembourg on 17 January 2019.