JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
29 October 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark "QUO VADIS" — Earlier national word mark QUO VADIS — Relative ground for refusal — Article 8(5) of Regulation (EC) No 207/2009)
In Case T‑517/13,
Éditions Quo Vadis, established in Carquefou (France), represented by F. Valentin and J. Canlorbe, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo and A. Schifko, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Francisco Gómez Hernández, residing in Jacarilla (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 July 2013 (Case R 1166/2012-4) relating to opposition proceedings between Mr Francisco Gómez Hernández and Éditions Quo Vadis,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Court Registry on 19 September 2013,
having regard to the response lodged at the Court Registry on 13 January 2014,
having regard to the decision of 4 March 2014 not to allow the lodging of a reply,
further to the hearing on 24 June 2015,
gives the following
Judgment
Background to the dispute
1 On 10 February 2010, the other party to the proceedings before the Board of Appeal, Mr Francisco Gómez Hernández, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the word sign "QUO VADIS".
3 The goods and services in respect of which registration was sought are in Classes 29, 33 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, for each of those classes, to the following description:
– Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;
– Class 33: ‘Alcoholic beverages (except beers)’;
– Class 35: ‘Advertising; business management; business administration; retailing including via global computer networks of foodstuffs, in particular wine and oil’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2010/069 of 19 April 2010.
5 On 19 July 2010, the applicant, Éditions Quo Vadis, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 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 earlier marks:
– the French word mark QUO VADIS registered on 11 June 1992 under the number 92 422 947 and renewed as from 22 June 2012 for goods and services in Classes 9, 38 and 42, namely ‘Data processing equipment; software and software package; Information broadcasting; Software and software package for computer creation and development’;
– the French word mark QUO VADIS registered on 13 January 1984 under the number 1 257 750 and renewed as from 19 November 2003 for, inter alia, the following goods: ‘Paper and paper goods, cardboard and cardboard goods; printed matter, newspapers and periodicals, books, stationery, adhesive materials (for stationery and bookbinding); all office supplies such as note pad, time planners, calendar, pencils, fountain pens, propelling pencils, rubber erasers, writing paper, envelopes’ in Class 16.
7 The grounds relied on in support of the opposition were that set out in Article 8(1)(b) of Regulation No 207/2009 in respect of both earlier marks and that set out in Article 8(5) of Regulation No 207/2009 in respect of the French word mark number 1 257 750.
8 By decision of 15 June 2012, the Opposition Division, first, rejected the opposition in so far as it was based on Article 8(1)(b) of Regulation No 207/2009 inasmuch as all the goods and services covered by the marks at issue were dissimilar and, secondly, upheld the opposition relating to infringement of Article 8(5) of Regulation No 207/2009 in respect of some of the contested goods and services, namely ‘alcoholic beverages (except beers)’ in Class 33 and ‘retailing including via global computer networks of alcoholic beverages, in particular wine’ in Class 35.
9 On 25 June 2012, Mr Gómez Hernández filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 10 July 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM annulled the Opposition Division’s decision and rejected the applicant’s opposition.
11 First, in so far as the opposition was based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal took the view that, inasmuch as the goods and services covered by the marks at issue were dissimilar, there was no likelihood of confusion, irrespective of whether the earlier marks had been put to genuine use. Secondly, in so far as the opposition was brought on the basis of Article 8(5) of that regulation, the Board of Appeal found, in essence, that there was no link between the contested mark, which was used in relation to alcoholic beverages and the retailing of wine, and the earlier mark, which was used in relation to time planners.
Procedure and forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– reject the contested application for registration, number 8 871 758, of the mark "QUO VADIS" in respect of ‘alcoholic beverages’ in Class 33 and ‘retailing including via global computer networks of alcoholic beverages, in particular wine’ in Class 35, on the basis of Article 8(5) of Regulation No 207/2009.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 At the hearing, the applicant stated, as regards its second head of claim, that it was requesting purely the annulment of the contested decision, a point of which formal note was taken.
Law
15 In support of its application for annulment of the contested decision, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009.
16 First, the applicant submits that the Board of Appeal erred in finding that it was unlikely that the relevant public would establish a link between the contested mark, which is used in relation to alcoholic beverages and the retailing of wine, and the earlier mark, which has a reputation for time planners, because the goods and services at issue have a different nature, purpose and method of use. In the applicant’s view, the Board of Appeal should have considered factors other than the similarity of the goods and services such as the strong reputation of the earlier mark and the fact that that mark has a highly distinctive character.
17 Secondly, according to the applicant, the image of youth conveyed by the earlier mark and the negative connotation conveyed by alcohol constitutes a detrimental association of the sign with the risky behaviours and anti-social attitudes that alcohol consumption may result in and the negative feelings which are generally associated with it.
18 Thirdly, the applicant submits that the Board of Appeal should have taken into account the fact that the registration and use of the contested mark in respect of alcoholic beverages would restrict the ability and freedom of the proprietor of the earlier mark with a reputation to communicate through its trade mark on account of the negative image of alcoholic beverages and on account of French legislation which significantly restricts ‘direct or indirect’ advertising in respect of alcohol. In that regard, the applicant refers to decisions of the Cour d’Appel de Paris (Court of Appeal, Paris) and of the French Cour de Cassation (Court of Cassation) which confirm its argument.
19 Fourthly, the applicant claims that no legally valid reason has been submitted to justify the use of the sign "QUO VADIS" by the trade mark for alcoholic beverages and that that mark is therefore to be regarded as registered without due cause.
20 OHIM disputes the applicant’s claims.
21 Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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.
22 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, 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, it must have a reputation in the Community, in the case of an earlier Community 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 (judgment of 22 March 2007 in Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, ECR, EU:T:2007:93, paragraphs 34 and 35, and judgment of 11 July 2007 in Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, ECR, EU:T:2007:214, paragraphs 54 and 55).
23 More specifically, the fourth of the conditions for the application of Article 8(5) of Regulation No 207/2009 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 that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment in VIPS, cited in paragraph 22 above, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
24 In the present case, it is appropriate to examine the fourth condition set out in paragraph 22 above inasmuch as it is common ground that, as the Board of Appeal in essence found in paragraph 27 of the contested decision, the first three conditions set out in paragraph 22 above are satisfied since the earlier mark is registered in France, the marks at issue are almost identical and the earlier mark has a reputation in France for ‘time planners’ in Class 16.
25 It should be borne in mind that, according to the case-law, the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see order of 30 April 2009 in Japan Tobacco v OHIM, C‑136/08 P, EU:C:2009:282, paragraph 25 and the case-law cited; judgment of 25 January 2012 in Viaguara v OHIM — Pfizer (VIAGUARA), T‑332/10, EU:T:2012:26, paragraph 22; and judgment of 14 December 2012 in Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), T‑357/11, EU:T:2012:696, paragraph 29).
26 The existence of such a link must be assessed globally, taking into account all the factors relevant to the circumstances of the case. Among those factors are the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see, by analogy, as regards Article 4(4)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which is, in essence, identical to Article 8(5) of Regulation No 207/2009, judgment of 27 November 2008 in Intel Corporation, C‑252/07, ECR, EU:C:2008:655, paragraph 42; judgment of 12 March 2009 in Antartica v OHIM, C‑320/07 P, EU:C:2009:146, paragraph 45; and order in Japan Tobacco v OHIM, cited in paragraph 25 above, EU:C:2009:282, paragraph 26).
27 In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment in Antartica v OHIM, cited in paragraph 26 above, EU:C:2009:146, paragraph 44 and the case-law cited, and order in Japan Tobacco v OHIM, cited in paragraph 25 above, EU:C:2009:282, paragraph 27 and the case-law cited).
28 In the present case, first of all, it must be stated that, as has been pointed out in paragraph 24 above, the signs at issue are almost identical.
29 Secondly, it must be pointed out that, as the Board of Appeal was right to find in paragraphs 31 and 32 of the contested decision, the goods and services covered by the marks at issue are different in every respect.
30 In the present case there is no indication of any proximity or link between, on the one hand, alcoholic beverages and the retailing of wine and, on the other hand, time planners, which do not have in common any of the factors to be taken into account in assessing their similarity. They have a completely different nature, purpose and method of use. Their producers and suppliers are active in completely different fields of business without the slightest overlap or link.
31 Thirdly, it is important to note, as was observed by the Board of Appeal, that the publics at which the goods and services covered by the marks at issue are aimed do not overlap.
32 Although the goods and services at issue are all aimed at the general public, their respective target publics are very different because the contested goods and services are not, by definition, mentioned in relation to youngsters or teenagers, who constitute the specific part of the relevant public which the earlier goods target. In that regard, it must be pointed out that the Board of Appeal adopted the Opposition Division’s assessment that the earlier mark had a reputation in France among the adolescent population for ‘time planners’ in Class 16.
33 Fourthly, as regards the strength of the earlier word mark’s reputation and distinctive character, it must be pointed out that, according to the case-law, 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 call that earlier mark to mind. Accordingly, for the purposes of assessing whether there is a link between the marks at issue, the degree of the earlier mark’s distinctive character must be taken into consideration (see judgment in Intel Corporation, cited in paragraph 26 above, EU:C:2008:655, paragraphs 54 and 55).
34 In that regard, the distinctive character of a mark is all the stronger if that mark is unique, that is to say if the word of which it consists has not been used by anyone for any goods or services other than by the proprietor of the mark for the goods and services it markets (see judgment in Intel Corporation, cited in paragraph 26 above, EU:C:2008:655, paragraph 56).
35 However, in the present case, it must be pointed out that the expression ‘quo vadis’ is a Latin phrase meaning ‘Where are you going?’ which is used by third parties in various sectors in connection with goods and services other than those covered by the earlier mark. It is sufficient, in this connection, to carry out a basic search on the Internet or to consult OHIM’s database to confirm that fact. It follows that the distinctive character of the earlier mark is at most average.
36 Fifthly, as was pointed out in paragraphs 17 to 19 of the contested decision, any likelihood of confusion between the marks at issue has to be rejected.
37 In the light of all of the considerations set out in paragraphs 28 to 36 above, it must be held that, even though the signs at issue are almost identical and the earlier mark has a reputation in France among the adolescent population for ‘time planners’ in Class 16, there is no likelihood of a connection being made between them since the goods and services covered by the marks at issue are different in all respects and, in particular, the images which they evoke bear no relation to each other, the publics at which the goods and services covered by those marks are aimed do not overlap, the earlier mark has an average distinctive character and the relevant public is not likely to confuse those signs.
38 In those circumstances, it must be held, as the Board of Appeal rightly concluded in paragraph 34 of the contested decision, that, since no link between the marks at issue may be established, the use of the mark applied for is not likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier word mark.
39 It is important to point out in that regard that, as is apparent, in essence, from the case-law set out in paragraph 27 above, the finding that there is no link between the marks at issue makes it possible to conclude that the use of the later mark is not likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark. Consequently, the applicant’s arguments seeking to establish that the use of the mark applied for would result in detriment must be rejected as unfounded.
40 It is apparent from all of the foregoing considerations that the Board of Appeal was right to find that the fourth of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 was not satisfied. The present plea put forward by the applicant must therefore be rejected.
41 In any event, as regards the applicant’s arguments relating to the alleged detriment to the repute of the earlier mark, it must be pointed out that the concept of detriment to repute, which is often referred to by the terms ‘dilution by tarnishment’ or more simply ‘tarnishment’, relates to situations in which the use without due cause of the contested mark is likely to devalue the image or prestige that a mark with a reputation has been able to acquire among the public. The detriment to the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (judgment of 7 December 2010 in Nute Partecipazioni and La Perla v OHIM — Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T‑59/08, ECR, EU:T:2010:500, paragraph 35).
42 The reputation of the earlier trade mark may be tainted or debased in that way when the mark is reproduced either in an obscene, degrading or inappropriate context or in a context which is not in itself unpleasant, but which proves to be incompatible with a particular image that the earlier trade mark has acquired for the public as a result of the advertising investments of its owner. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark (judgment of 18 June 2009 in L'Oréal and Others, C‑487/07, ECR, EU:C:2009:378, paragraph 40).
43 However, that is not the case here. As the Board of Appeal rightly pointed out in paragraph 41 of the contested decision, wine and spirits are not inherently harmful. By contrast, the excessive consumption of alcohol is harmful and causes serious health problems. The contested goods and services do not therefore convey any negative connotation that contrasts strongly with the earlier mark’s image, which is associated with youth and values related to youth, such as health, dynamism, friendship or a relaxed attitude. That argument cannot therefore succeed.
44 Furthermore, as regards the applicant’s argument relating to the alleged obstacle to the free use of the earlier mark and the resulting detriment to its distinctive character, it must be held, as the Board of Appeal found, that, even if it were accepted that French law might impose a ban on advertising for the mark QUO VADIS as indirect advertising for alcoholic beverages, the negative effect that that ban might have on the use of the earlier trade mark by its lawful proprietor is the result of the national legislation and not of the lawful use which third parties make of their marks.
45 In that regard, it must be borne in mind that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (judgment of 5 December 2000 in Messe München v OHIM (electronica), T‑32/00, ECR, EU:T:2000:283, paragraph 47).
46 Furthermore, the legality of decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of national decisions, even where the latter are based on provisions analogous to those of that regulation (judgment of 19 October 2006 in Bitburger Brauerei v OHIM — Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud), T‑350/04 to T‑352/04, ECR, EU:T:2006:330, paragraph 115).
47 Consequently, that argument can also not succeed.
48 Lastly, as regards the applicant’s arguments relating to the registration without due cause of the mark applied for, it is sufficient to point out that an examination of the existence of at least one of the three types of risk covered by the fourth condition for the application of Article 8(5) of Regulation No 207/2009 must, logically, precede an assessment of any ‘due cause’. If it is established that none of those three types of risk exists, the registration and use of the mark applied for cannot be prevented, as the existence or absence of due cause for the use of the mark applied for is, in those circumstances, irrelevant (judgment in VIPS, cited in paragraph 22 above, EU:T:2007:93, paragraph 60).
49 It follows from all of the foregoing that the plea alleging infringement of Article 8(5) of Regulation No 207/2009 must be rejected and the action must be dismissed in its entirety.
Costs
50 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.
51 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Éditions Quo Vadis to pay the costs.
Delivered in open court in Luxembourg on 29 October 2015.
[Signatures]