JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
28 May 2020 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark TASER — Earlier EU word marks TASER — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Detriment to reputation — Unfair advantage taken of the distinctive character or the repute of the earlier trade mark — Article 8(5) of Regulation 2017/1001)
In Case T‑341/19,
Martínez Albainox, SL, established in Albacete (Spain), represented by J. Carbonell Callicó, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Taser International, Inc., established in Scottsdale, Arizona (United States),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 March 2019 (Case R 1577/2018-4), relating to invalidity proceedings between Taser International and Martínez Albainox,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva and B. Berke (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 6 June 2019,
having regard to the response lodged at the Court Registry on 6 August 2019,
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 24 April 2014, the applicant, Martínez Albainox, SL, 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 following figurative sign:
3 The goods in respect of which registration of the mark was sought are in Class 8 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 to the following description: ‘Hand tools and implements (hand operated); cutlery; side arms; penknives, expressly not including shaving razors, shaving knives and shaving utensils’.
4 The mark was registered on 18 September 2014.
5 On 27 May 2016, Taser International, Inc. (‘the proprietor of the earlier mark’) filed with EUIPO an application for a declaration that the contested mark was invalid on the basis of the following marks:
– the EU word mark TASER, which was registered on 3 March 2005 and renewed until 24 September 2023 under the number 3367661 in respect of goods and services in Classes 13, 41 and 45 of the Nice Agreement, corresponding, for each of those classes, to the following description:
– Class 13: ‘Firearms; ammunition and projectiles, weapons, weapon apparatus and installations; actuators for use with weapons; actuators for use in weapon ejecting installations; actuators for use in weapon loading installations; apparatus for firing weapons; defence apparatus and installations; holsters for weapons; motorised weapons; guns; air guns; cartridges for guns; harpoon guns; non-lethal electronic weapons, and accessories therefore; apparatus and equipment relating to all the aforesaid goods’;
– Class 41: ‘Provision of training; training services relating to health and safety; technical training relating to safety; information, advice and consultancy services relating to all the aforesaid’;
– Class 45: ‘Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals, civil protection services; crime prevention advisory services; safety services, rental of safety apparatus and equipment; information, advice and consultancy services relating to all the aforesaid’;
– the EU word mark TASER, which was registered on 29 August 2011 under the number 9818337 in respect of goods in Class 9 of the Nice Agreement corresponding to the following description: ‘Apparatus for recording video, video cameras, digital video recorders; recorded media having recorded video, audio, and photographic evidence of incidents and recorded actions and communications; motion picture films that include evidence of incidents in the fields of law enforcement, professional security, medical, and consumer security; hand-held devices that play-back video recordings and permit recording audio narration of played-back video recordings; body-worn recorder input/output boxes, namely boxes with electronic circuits that receive video and audio at inputs, provide video and audio at outputs as selected by a user, and provide an interface for user control of a body-worn video and audio recorder; electronic modules for installation as a component part on or in weapons, namely, modules including battery or data storage for operation of the weapon or recording operation of the weapon’.
6 The grounds relied on in support of the application for a declaration of invalidity were, first, those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001), and, secondly, bad faith under Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001).
7 In support of its application for a declaration of invalidity, the proprietor of the earlier mark submitted evidence of the reputation of the earlier marks referred to in paragraph 5 above.
8 On 7 November 2016, the applicant requested that the proprietor of the earlier mark provide, in accordance with Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001), proof of use of the earlier mark registered under the number 3367661 (‘the earlier mark’), which has been referred to in the first indent of paragraph 5 above, in connection with all the goods and services on which the application for a declaration of invalidity was based.
9 On 24 February 2017, the proprietor of the earlier mark referred to the evidence that had already been provided and also furnished further evidence of genuine use of that earlier mark.
10 By decision of 21 June 2018, the Cancellation Division granted the application for a declaration of invalidity in its entirety and declared the contested mark invalid. In particular, although the proprietor of the earlier mark had filed its application for a declaration of invalidity on the basis, first, of Article 8(1)(b) of Regulation 2017/1001 and, secondly, of Article 8(5) of that regulation, it examined the application solely in the light of the latter provision. After finding that the proprietor of the earlier mark had proved genuine use of the earlier mark in connection with ‘non-lethal electronic weapons and accessories’ in Class 13 and the services of ‘training; training services relating to health and safety; technical training relating to safety; information, advice and consultancy services relating to all the aforesaid’ in Class 41, the Cancellation Division found that the earlier mark enjoyed a high degree of recognition among the relevant public, that the signs were highly similar, that the goods in Classes 8 and 13 were intended to be used by the general public for self-defence, that the coincidence in the word ‘taser’ in the marks at issue would lead consumers to associate those marks and, lastly, that such an association would enable the applicant to take unfair advantage of the reputation of the earlier mark.
11 On 14 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
12 By decision of 20 March 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal, having, first of all, analysed the application for a declaration of invalidity on the basis of Article 8(1)(b) of Regulation 2017/1001. First, it found that genuine use of the earlier mark in the European Union in connection with ‘non-lethal electronic weapons’ had been proved. Secondly, regarding the comparison of the goods, it found that the contested goods ‘side arms; penknives’ in Class 8 were similar, at least to an average degree, to the goods ‘non-lethal electronic weapons’ in Class 13 covered by the earlier mark. By contrast, the goods ‘hand tools and implements (hand operated)’ and ‘cutlery’ in Class 8 were found to be dissimilar to the ‘non-lethal electronic weapons’ in Class 13 covered by the earlier mark. Thirdly, as regards the comparison of the signs, it concluded that the visual similarity between the marks was high, that the marks were phonetically identical and that, from a conceptual standpoint, neither of the signs had a meaning. It found that the crack-like figurative element stretching across the letters did not prevent the letters from being clearly perceived and merely had a decorative function. As regards the global assessment of the likelihood of confusion, the Board of Appeal found that a likelihood of confusion on the part of the relevant public existed with regard to the similar goods ‘side arms; penknives’ in Class 8. With regard to the other goods, which were dissimilar, it found that there was no likelihood of confusion. Next, the Board of Appeal analysed the application for a declaration of invalidity on the basis of Article 8(5) of Regulation 2017/1001 with regard to the goods in respect of which there was no likelihood of confusion. First, as regards reputation, it found that the earlier mark enjoyed a high degree of recognition amongst the relevant public and a solid reputation for the goods ‘non-lethal electronic weapons’. Secondly, as regards the condition of use which would take unfair advantage of the distinctive character or the repute of the earlier mark, the Board of Appeal found that there was a link between the marks at issue, pointing out that, in addition to the strong reputation of the earlier mark and the high degree of similarity between the marks, which were even identical from a phonetic point of view, the goods covered by the contested mark were connected with the goods covered by the earlier mark, even though they were not similar, and that there was an overlap between their relevant publics, since ‘non-lethal electronic weapons’ also included self-defence devices that were aimed at the general public. Thirdly, the Board of Appeal, like the Cancellation Division, found that, as a consequence of that link between the marks at issue, a risk of unfair advantage existed.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision, expressly declaring that the contested mark is valid for all the goods in Class 8 in respect of which that mark has been registered;
– order EUIPO and the proprietor of the earlier mark to pay the costs, including those incurred before the Board of Appeal.
14 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
15 In support of its action, the applicant puts forward two pleas in law, alleging, respectively, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, and infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation.
The first plea, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation
16 The applicant submits that the conducted electrical weapons covered by the earlier mark are sold only to law enforcement authorities, which constitute a highly specialised public, since the general public is not allowed to purchase products of that kind. It relies on numerous items of evidence which demonstrate that those goods are aimed exclusively at that specialist public. It maintains that, in comparison, the goods covered by the contested mark are aimed at the general public, which does not consist of consumers that are also likely to use the goods covered by the earlier mark. It submits that there is therefore no likelihood of confusion. Furthermore, the applicant takes the view that the goods covered by the earlier mark (conducted electrical weapons) are directed at a public with a high degree of attention, which represents a further element confirming that there is no likelihood of confusion. The applicant states that the fact that it markets not only cutlery, but also hunting and sporting knives, does not imply that the marks at issue are aimed at the same type of customers because those goods are not aimed at law enforcement authorities, since hunters are consumers who are fundamentally different from police officers. Furthermore, the applicant adds that, according to the case-law, where goods are aimed only at specialists for professional use, the likelihood of confusion must be assessed from the point of view of that specialist public only.
17 EUIPO disputes the applicant’s arguments.
18 Article 60(1)(a) of Regulation 2017/1001 provides that an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 of that article are fulfilled.
19 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
20 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
21 It follows that the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between two marks at issue must not be assessed on the basis of an abstract comparison of the signs at issue and the goods or services which they designate. Rather, the assessment of that likelihood of confusion must be based on the perception which the relevant public will have of those signs, goods and services.
22 In that regard, account must be taken of the fact that a restricted and specialist public is likely to have specific knowledge of the goods or services covered by the marks at issue or to display, in that regard, a higher level of attentiveness than the general public (see, to that effect, judgments of 19 November 2008, Ercros v OHIM — Degussa (TAI CROS), T‑315/06, not published, EU:T:2008:513, paragraph 26; of 28 October 2009, Juwel Aquarium v OHIM — Potschak (Panorama), T‑339/07, not published, EU:T:2009:415, paragraph 33; and of 9 February 2010, PromoCell bioscience alive v OHIM (SupplementPack), T‑113/09, not published, EU:T:2010:34, paragraph 31). Those factors may play a decisive role in determining whether or not there is a likelihood of confusion between those marks.
23 According to settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
24 Furthermore, the relevant public for the purposes of the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (judgment of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23).
25 In the present case, it must be pointed out at the outset, first, that the Board of Appeal found that there was a likelihood of confusion between the marks at issue only in relation to the goods ‘side arms; penknives’ in Class 8 covered by the contested mark and, secondly, that the applicant does not dispute the Board of Appeal’s assessment regarding the comparison of the signs, but confines itself to calling into question the comparison of the goods, solely as regards the definition of the relevant publics with regard to the marks at issue, in order to show that the goods covered by the earlier mark are aimed only at law enforcement authorities, whereas the goods covered by the contested mark are not aimed at those law enforcement authorities, and that the publics are totally distinct and do not overlap. Consequently, it submits, in essence, that no consumers would be likely to use both the goods covered by the earlier mark and those covered by the contested mark and that there is no possibility of a likelihood of confusion between the marks at issue.
26 In that regard, first, it is sufficient to state that, as the Board of Appeal rightly found in paragraph 26 of the contested decision, the goods ‘side arms; penknives’ in Class 8 covered by the contested mark are similar, at least to an average degree, to the goods ‘non-lethal electronic weapons’ in Class 13 covered by the earlier mark. The ‘side arms’ covered by the contested mark are non-explosive weapons which are worn on the body and include, for example, swords and knives (other than domestic utensils). Penknives and side arms can be used as weapons, which confirms that those goods and the goods covered by the earlier mark can have the same purpose and can be in competition with each other, since penknives and side arms can be used for defending or attacking.
27 Secondly, it is necessary to uphold the Board of Appeal’s finding, in paragraph 26 of the contested decision, that penknives and side arms have the same target public, since it cannot be ruled out that the specialist public, consisting of law enforcement authorities and private security services, might purchase penknives or side arms, regardless of whether they are required or authorised to use them in carrying out their duties. In principle, those goods, as well as those covered by the earlier mark, will be purchased by the departments in the law enforcement authorities that are responsible for purchasing equipment and there is nothing to prevent those departments from being faced, at the time of purchase, with those various goods and from possibly thinking, in the light of the high degree of similarity between the signs, that they all come from the proprietor of the earlier mark. There could therefore be a likelihood of confusion for the specialist part of the relevant public, which consists of law enforcement authorities and private security services.
28 Consequently, the applicant’s arguments that the evidence shows that the goods covered by the earlier mark are aimed exclusively at law enforcement authorities are ineffective. It is clear from settled case-law that a likelihood of confusion for part of the relevant public suffices for registration of the mark applied for to be refused (see judgment of 16 May 2017, AW v EUIPO — Pharma Mar (YLOELIS), T‑85/15, not published, EU:T:2017:336, paragraph 49 and the case-law cited).
29 The same is true as regards the applicant’s argument relating to the high level of attention of the specialist public in question, since that level of attention was indeed taken into account by the Board of Appeal, in paragraphs 39 and 41 of the contested decision, but was not capable of affecting its finding regarding the existence of a likelihood of confusion in the present case.
30 It follows from the foregoing that the Board of Appeal did not err in finding, in paragraph 41 of the contested decision, that there was a likelihood of confusion between the marks at issue as regards the goods ‘side arms; penknives’ in Class 8.
31 Moreover, it must be pointed out that, in so far as the applicant seems to be seeking to dispute the proof of use which the proprietor of the earlier mark provided, by observing that most of the evidence does not relate to the relevant period or the relevant territory, it must be stated that, out of the 38 numbered exhibits that were analysed in the application, only 12 actually seem not to relate to the relevant period (from 24 April 2009 to 26 May 2016) or the relevant territory (of the European Union). Furthermore, one of those exhibits partly concerns a period which is not relevant. However, such a finding cannot call into question the Board of Appeal’s conclusion that the earlier mark had been put to genuine use, since the other items of evidence are sufficient to establish that. As regards the rest of the items of evidence, the applicant relies on them to show that the goods covered by the earlier mark are aimed at law enforcement authorities. That is not, however, capable of calling into question the Board of Appeal’s finding that there is a likelihood of confusion between the goods ‘side arms; penknives’ in Class 8 and the ‘non-lethal electronic weapons’ in Class 13, as is apparent from paragraphs 27 to 30 above.
32 It follows from the foregoing that the first plea must be rejected.
The second plea, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation
33 In the context of the second plea, the applicant disputes paragraph 54 of the contested decision in so far as the Board of Appeal found that the relevant publics with regard to the marks at issue overlapped and that there was therefore a possibility that the public would make a connection between the marks at issue, even though it would not confuse them. It disputes, in particular, the finding that the goods ‘non-lethal electronic weapons’, in respect of which the reputation of the earlier mark had been proved, also include self-defence devices which are aimed at the general public and which might be sold in the same shops as the goods covered by the contested mark or be sold by third parties. It submits that the goods covered by the contested mark include goods such as ‘multitools and pen knives’, ‘shooting knives and tools on various hunting and shooting online shop websites’, ‘clothing accessories for hunting and shooting footwear’ and ‘clothing accessories for hunting’. It submits that those goods, contrary to what was stated by the Board of Appeal, could not be provided in the same shops as ‘non-lethal electronic weapons’, which are only distributed on the website of the proprietor of the earlier mark and are aimed only at law enforcement agencies. The applicant also states that the goods of the proprietor of the earlier mark that are marketed on the websites for various European countries are divided into three categories and that only one of those categories is distinguished under the earlier mark. Lastly, the applicant reiterates that the goods and devices covered by the earlier mark are aimed solely at law enforcement agencies, which, as far as Europe is concerned, cannot purchase the goods of the proprietor of the earlier trade mark on the websites. It submits that, since the applicant’s goods are, by contrast, aimed at the general public, no overlap between the relevant publics is possible and there is therefore no possibility of a link being established between the marks at issue with regard to the goods concerned. The applicant maintains that, consequently, it cannot be concluded that any advantage will be taken of the repute of the earlier mark.
34 EUIPO disputes the applicant’s arguments.
35 Article 60(1)(a) of Regulation 2017/1001 provides that an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 5 of that article are fulfilled.
36 Article 8(5) of Regulation 2017/1001 provides that 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.
37 It is clear from the wording of Article 8(5) of Regulation 2017/1001 and from the case-law that, for an earlier trade mark to be afforded the broader protection under that provision, a number of conditions must therefore be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, the earlier mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see, by analogy, judgment of 13 December 2018, Monster Energy v EUIPO — Bösel (MONSTER DIP), T‑274/17, EU:T:2018:928, paragraph 55 (not published) and the case-law cited).
38 In order to satisfy the condition relating to the similarity of the marks which is laid down by Article 8(5) of Regulation 2017/1001, it is not necessary to prove that there exists, on the part of the relevant public, a likelihood of confusion between the earlier mark with a reputation and the contested mark. It is sufficient for the degree of similarity between the earlier mark with a reputation and the contested mark to have the effect that the relevant public establishes a link between them, even though it does not confuse them (see, to that effect, judgment of 27 October 2016, Spa Monopole v EUIPO — YTL Hotels & Properties (SPA VILLAGE), T‑625/15, not published, EU:T:2016:631, paragraph 34 and the case-law cited).
39 According to the case-law, the fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark would call the earlier mark to mind is tantamount to the existence of such a link (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).
40 Whether such a link exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the degree of similarity between the signs at issue; the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the part of the public (see judgment of 5 May 2015, Spa Monopole v OHIM — Orly International (SPARITUAL), T‑131/12, EU:T:2015:257, paragraph 48 and the case-law cited).
41 As regards the degree of similarity between the marks at issue, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. Furthermore, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, faced with an identical or similar later mark, the relevant public will make a link with that earlier mark (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 44 and 54).
42 Moreover, it is also settled case-law that, the stronger the earlier mark’s reputation, the easier it will be to accept that harm has been caused to it (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69 and the case-law cited).
43 Furthermore, it must be pointed out that certain marks may have acquired such a reputation that it goes beyond the relevant public with regard to the goods or services in respect of which those marks were registered. In such a case, it is possible that the relevant public with regard to the goods or services for which the later mark is registered will make a connection between the marks at issue, even though that public is wholly distinct from the relevant public with regard to the goods or services for which the earlier mark was registered (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 and 52).
44 As regards the fourth condition referred to in paragraph 37 above, Article 8(5) of Regulation 2017/1001 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary for there to be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see, by analogy, judgment of 13 December 2018, MONSTER DIP, T‑274/17, EU:T:2018:928, paragraph 56 (not published) and the case-law cited).
45 The existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 36).
46 It is in the light of those principles that the lawfulness of the contested decision must be assessed.
47 In the present case, it should be noted at the outset, first, that the goods covered by the contested mark which the Board of Appeal analysed on the basis of Article 8(5) of Regulation 2017/1001 were only the ‘hand tools and implements (hand operated)’ and ‘cutlery’ in Class 8.
48 Secondly, the Board of Appeal’s findings in paragraphs 46 to 49 of the contested decision, which are not disputed in the context of the present plea, that the earlier mark has a reputation and that there has been intensive use of that mark in connection with ‘non-lethal electronic weapons’ in Class 13, must be upheld on the grounds set out in paragraph 31 above. Thirdly, it must be stated that the applicant does not dispute that the signs at issue are highly similar.
49 The applicant confines itself, by contrast, to disputing the findings which the Board of Appeal made in paragraph 54 of the contested decision regarding the existence of a link that the relevant public might make between the marks at issue and according to which the goods covered by the earlier mark are aimed at the general public and are marketed via the same distribution channels as those of the goods covered by the contested mark. It maintains, in essence, that the relevant publics with regard to the marks at issue differ and that there is no likelihood of confusion between those marks. Furthermore, the applicant submits that the relevant public will not establish any link between the marks at issue and that consequently it cannot be held that any advantage would be taken of the earlier mark’s repute.
50 In that regard, the Board of Appeal found, in paragraph 54 of the contested decision, that, in the present case, the existence of a link between the marks at issue had to be confirmed, because, in addition to the strong reputation of the earlier mark and the high degree of similarity between the signs at issue, the contested goods were connected with the earlier goods, even though they were not similar, and that there was an overlap between their relevant publics, with the result that a link, for the purposes of Article 8(5) of Regulation 2017/1001, could be established. It found that the evidence submitted showed that the ‘non-lethal electronic weapons’ for which the earlier mark had a reputation also included self-defence devices which were aimed at the general public. It took the view that the extracts from the website of the proprietor of the earlier mark and from the websites of third parties showed that the goods, such as ‘multitools and penknives’ and ‘shooting knives and tools’, might also be provided in the same shops and therefore be directed at the same consumers.
51 It must be pointed out that the relevant public with regard to the goods ‘non-lethal electronic weapons’ in Class 13 covered by the earlier mark is a specialist public, which consists in essence of law enforcement authorities and private security services in the European Union and has a high level of attention. That assessment on the part of the Board of Appeal, which was carried out in paragraph 39 of the contested decision, must be upheld.
52 However, the Board of Appeal also included the general public, the level of attention of which is average, in the definition of the relevant public, since ‘non-lethal electronic weapons’ also included self-defence equipment and devices.
53 The applicant disputes that assessment on the part of the Board of Appeal.
54 It is apparent from the evidence that the proprietor of the earlier mark, in addition to electronic guns, also offers a wide range of self-defence products on its websites. Those websites are accessible via search engines and the European websites redirect users to the American website. Furthermore, the same goods may be sought on e-commerce platforms. In addition, although the general public in the majority of the Member States of the European Union is not itself permitted to purchase electronic guns, that public is aware of them.
55 As is apparent from the case-law referred to in paragraph 38 above, the fact that it is possible to establish a link between the marks at issue does not necessarily mean that there is a likelihood of confusion. Consequently, the relevant public to which reference must be made does not have to be the public consisting of consumers likely to use both the goods covered by the earlier mark and the goods covered by the contested mark, as is the case in the context of the application of Article 8(1)(b) of Regulation 2017/1001, but the public which might call the earlier mark to mind when it is confronted with the goods covered by the contested mark. Unless that public is totally distinct from the public with regard to the goods covered by the earlier mark and unless that earlier mark has not acquired such a reputation that it goes beyond the relevant public with regard to the goods that it covers, such a possibility of the earlier mark being called to mind cannot be ruled out.
56 In the present case, it is apparent from the findings made in paragraph 54 above that, although the general public does not have access to the non-lethal electronic weapons covered by the earlier mark, they are widely known to it, with the result that it might make a connection between the earlier mark and the contested mark when it is confronted with the goods covered by the contested mark. Consequently, the applicant’s claim that the relevant publics with regard to the goods at issue are totally distinct cannot be upheld.
57 In any event, in the first place, even if the relevant publics with regard to the goods at issue were distinct, according to the case-law cited in paragraph 43 above, in a situation where a mark has acquired such a reputation that it goes beyond the relevant public with regard to the goods in respect of which that mark was registered, it is possible that the relevant public with regard to the goods for which the contested mark is registered will make a connection between the marks at issue even though that public is wholly distinct from the relevant public with regard to the goods or services for which the earlier mark was registered.
58 In that regard, it must be stated that the Board of Appeal found, in paragraphs 48 and 49 of the contested decision, that the press articles which had been submitted showed that the earlier mark was widely known among the general public as the general press had also devoted numerous articles to it.
59 Furthermore, in paragraph 35 of the contested decision, the Board of Appeal stated that the word ‘taser’ appeared in dictionaries as meaning a specific kind of weapon and that the various dictionary entries also indicated that that word was a registered mark.
60 Those findings on the part of the Board of Appeal, which have not, moreover, been disputed by the applicant, make it possible to establish that the earlier mark, in addition to having a high degree of distinctiveness, as EUIPO points out, has a reputation that goes beyond the relevant public with regard to the goods covered by that mark, namely the specialist public which uses the ‘non-lethal electronic weapons’ in Class 13 (see, to that effect, judgment of 10 May 2007, Antartica v OHIM — Nasdaq Stock Market (nasdaq), T‑47/06, not published, EU:T:2007:131, paragraph 58).
61 It follows that, even if the Board of Appeal had erred in finding that the publics with regard to the goods covered by the marks at issue overlapped or that those goods were marketed via the same distribution channels, such an error could not call into question the Board of Appeal’s finding regarding the existence of a link, which is set out in paragraph 54 of the contested decision and has been referred to in paragraph 50 above, since the public with regard to the goods covered by the contested mark, when faced with goods such as ‘multitools and penknives’, ‘shooting knives and tools’ or other self-defence devices, which are capable of being included in the ‘hand tools and implements (hand operated)’ and ‘cutlery’ in Class 8, might make a connection with the earlier mark.
62 Since the outcome of the Board of Appeal’s assessment would have been the same, any such error, even if it were to be established, could not result in the annulment of the contested decision (see, to that effect, judgment of 15 January 2003, Mystery Drinks v OHIM — Karlsberg Brauerei (MYSTERY), T‑99/01, EU:T:2003:7, paragraph 36).
63 In the second place, it must be borne in mind that, pursuant to the case-law cited in paragraph 40 above, the question of whether a link between the marks at issue exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the degree of similarity between the signs at issue; the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the part of the public.
64 In that regard, the Board of Appeal found, first — a finding which the applicant has not disputed — in paragraphs 29 to 35 of the contested decision, that the marks at issue were similar to a high degree, secondly, in paragraph 54 of the contested decision, that the goods at issue, although not similar, were connected, since the proprietor of the earlier mark also marketed self-defence devices, which were aimed at the general public, on its websites, thirdly, in paragraph 40 of the contested decision, that the earlier mark had a normal degree of inherent distinctiveness and, lastly, in paragraphs 48 and 49 of the contested decision, that, in essence, the reputation of the earlier mark was such that it went beyond the relevant public with regard to the goods that it covered.
65 Accordingly, and in the light also of the case-law referred to in paragraphs 41 and 42 above, it must be held that the Board of Appeal did not make any error of assessment in finding, in the context of its global assessment of all those factors, that the public makes a link between the marks at issue.
66 Lastly, the applicant’s unsubstantiated argument that the specialist public will not establish any link between the marks at issue and that, consequently, it cannot be held that any advantage will be taken of the earlier mark’s repute cannot succeed. First, as is apparent from the case-law referred to in paragraph 45 above, the relevant public to which reference must be made in assessing whether there is injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark is that consisting of average consumers of the goods or services covered by the later mark, who are reasonably well informed and reasonably observant and circumspect, in the present case, the general public. Secondly, it is clear from paragraphs 47 to 64 above that the possibility of such a link being established in the present case cannot be ruled out.
67 In view of all of the foregoing, the applicant’s second plea must be rejected and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s first head of claim in so far as it seeks an express declaration by the Court that the contested mark is valid for all the goods in Class 8.
Costs
68 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO, without it being necessary to rule on the admissibility of the applicant’s second head of claim, in so far as it seeks to have the proprietor of the earlier mark ordered to pay the costs, since the proprietor of the earlier mark did not intervene before the Court.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Martínez Albainox, SL to pay the costs.
Delivered in open court in Luxembourg on 28 May 2020.
E. Coulon | | M. van der Woude |