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Language of document : ECLI:EU:T:2010:500

Case T-59/08

Nute Partecipazioni SpA and

La Perla Srl

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Invalidity proceedings – Community word mark NIMEI LA PERLA MODERN CLASSIC – Earlier national figurative marks la PERLA – Relative ground for refusal – Injury to reputation – Article 8(5) and Article 52(1)(a) of Regulation (EC) No 40/94 (now Article 8(5) and Article 53(1)(a) of Regulation (EC) No 207/2009))

Summary of the Judgment

1. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Proof to be adduced by proprietor

(Council Regulation No 40/94, Art. 8(5))

2. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions

(Council Regulation No 40/94, Art. 8(5))

3. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions

(Council Regulation No 40/94, Art. 8(5))

4. Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity – Registration contrary to Article 8(5) of Regulation No 40/94

(Council Regulation No 40/94, Arts 8(5) and 52(1)(a))

1. In order to benefit from the protection introduced by Article 8(5) of Regulation No 40/94 on the Community trade mark, the proprietor of the earlier mark must adduce proof that the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. Just one of those three types of injury suffices for Article 8(5) of that regulation to apply.

The proprietor of the earlier mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 40/94. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future.

Where the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark.

(see paras 31-34)

2. In order to determine whether the use of the later mark takes unfair advantage of the distinctive character or the repute of the earlier mark within the meaning of Article 8(5) of Regulation No 40/94 on the Community trade mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the earlier mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the earlier mark, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. In addition, the more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the earlier mark or is, or will be, detrimental to them.

Any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the earlier mark.

(see paras 42-43)

3. Article 8(5) of Regulation No 40/94 on the Community trade mark must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of an earlier mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a mark having similarities to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the mark’s image.

(see para. 45)

4. Proof has been furnished that the proprietor of the word mark NIMEI LA PERLA MODERN CLASSIC, registered as a Community trade mark for ‘pearls’ in Class 14 of the Nice Agreement, took unfair advantage, within the meaning of Article 8(5) of Regulation No 40/94 on the Community trade mark, of the reputation of the figurative trade mark la PERLA, registered earlier in Italy for ‘Swimwear, sportswear and clothing in general’ in Class 25 of that agreement, or that, at least, there was a serious risk that such an injury would occur in the future.

The repute of the earlier la PERLA trade mark had been established for lingerie and swimwear and can even be considered to be very well established. Furthermore, there is a certain degree of similarity between the marks at issue and the goods covered by the earlier mark, that is, women’s clothing, and those covered by the later mark, that is, pearls, belonging to adjacent market segments.

Finally, the pearls may be used in the production of swimwear and other women’s clothing. It is not inconceivable that the consumers of jewellery and, more specifically, of pearls, know the lingerie and swimwear marketed by the proprietor of the earlier trade mark.

(see paras 36, 56-58)