JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
8 December 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark ‘only givenchy’ – Earlier Community and national word marks ONLY – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 – Reputation – Article 8(5) of Regulation No 207/2009)
In Case T‑586/10,
Aktieselskabet af 21. november 2001, established in Brande (Denmark), represented by C. Barrett Christiansen, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Parfums Givenchy SA, established in Levallois-Perret (France),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 7 October 2010 (Case R 1556/2009-2) concerning opposition proceedings between Aktieselskabet af 21. november 2001 and Parfums Givenchy SA,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot, President, M.E. Martins Ribeiro (Rapporteur) and H. Kanninen, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 22 December 2010,
having regard to the response lodged at the Court Registry on 13 May 2011,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 10 August 2004, Parfums Givenchy SA filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the following figurative sign:
3 The goods in respect of which registration was sought are in Class 3 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: ‘Toilet soaps; perfumes; eau de Cologne and eau de toilette; cosmetics; make-up; essential oils for personal use; milks, lotions, creams, emulsions, gels for the face and body; deodorants for personal use’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 18/2005 of 2 May 2005.
5 On 21 July 2005, the applicant, Aktieselskabet af 21. november 2001, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on the registration of the following earlier word marks:
– the Danish word mark ONLY, filed on 28 June 2001 and registered on 10 August 2001 under Reference VR 2001 03359, covering, inter alia, goods in Classes 3 and 9 corresponding, for each of those classes, to the following descriptions:
– Class 3: ‘Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
– Class 9: ‘Spectacles, spectacle frames, anti-glare spectacles, sunglasses’;
– the Danish word mark ONLY, filed on 28 April 1995 and registered on 17 May 2000 under Reference VR 2000 02183, covering goods in Class 25 corresponding to the description ‘clothing and footwear’;
– the Community word mark ONLY, filed on 25 September 1997 and registered on 7 January 2000 under No 638 833, covering goods in Classes 14, 18 and 25 corresponding, for each of those classes, to the following descriptions:
– Class 14: ‘Horological instruments’;
– Class 18: ‘Leather and imitations of leather and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
– Class 25: ‘Clothing, footwear and headgear’.
7 The opposition was based on the goods set out in paragraph 6 above covered by the earlier marks and was directed against all the goods covered by the trade mark application.
8 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) and also – as regards earlier Community trade mark No 638 833 and earlier Danish trade mark VR 2000 02183 – those set out in Article 8(5) of that regulation (now Article 8(5) of Regulation No 207/2009).
9 On 19 February 2007, Parfums Givenchy SA asked the applicant to provide proof of use of Community trade mark No 638 833.
10 On 22 October 2009, the Opposition Division rejected the opposition. It began its assessment by comparing the mark applied for with earlier Danish trade mark VR 2001 03359 and found that, although the goods were identical, there was no likelihood of confusion. As regards the goods covered by the two other earlier rights, namely Danish trade mark VR 2000 02183 and Community trade mark No 638 833, the Opposition Division considered that those marks were identical to Danish trade mark VR 2001 03359, with the result that there could a fortiori be no likelihood of confusion since the goods in question were different. With regard to Article 8(5)(b) of Regulation No 207/2009, the Opposition Division concluded that, even though the evidence submitted might demonstrate that earlier Danish mark VR 2000 02183 and Community trade mark No 638 833 had a reputation in the Member State concerned, the applicant had failed to show that use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.
11 On 17 December 2009, the applicant lodged an appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
12 By decision of 7 October 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal, like the Opposition Division, began its analysis by examining earlier Danish trade mark VR 2001 03359. In paragraph 18 of the contested decision, the Board of Appeal concluded that the relevant territory was Denmark and that the relevant consumer was the average consumer, deemed to be reasonably well informed and reasonably observant and circumspect. In paragraphs 21 and 22 of the contested decision, it also confirmed that the signs were visually similar only to a low degree, since the adverb ‘only’ served the purpose of drawing attention to the element ‘givenchy’ in the mark applied for, whereas in the earlier marks the adverb ‘only’ had a more general function. As regards the phonetic comparison, in paragraph 25 of the contested decision, the Board of Appeal considered that there was a medium degree of aural similarity between the signs due to the fact that the additional element ‘givenchy’ in the mark applied for will be pronounced. Conceptually, in paragraph 29 of the contested decision, the Board of Appeal held that the element ‘only givenchy’ formed a logical and conceptual unit with a laudatory semantic value, distinct from the word ‘only’ considered in isolation, with the result that the signs were partially similar. Accordingly, in paragraph 30 of the contested decision, the Board of Appeal concluded that there was no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009. As is clear from paragraph 31 of the contested decision, that finding also applied as regards earlier Danish mark VR 2000 02183 and Community trade mark No 638 833, since those marks were identical to earlier Danish trade mark VR 2001 03359, but the goods covered by those marks and those covered by the mark applied for were, at most, similar. Lastly, as regards Article 8(5) of Regulation No 207/2009, the Board of Appeal considered in paragraph 36 of the contested decision that the degree of similarity between the signs at issue was not sufficient for the public to establish a connection between them, since the element ‘only’ in the mark applied for would be perceived as inseparable from the element ‘givenchy’, whereas it had an independent distinctive role in the earlier marks. Accordingly, as the condition requiring the signs to be sufficiently similar to lead the relevant public to make a connection between them was not met, in paragraph 37 of the contested decision the Board of Appeal rejected the plea based on Article 8(5) of Regulation No 207/2009.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision and the decision of OHIM’s Opposition Division of 22 October 2009;
– refuse to register the trade mark;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, second, infringement of Article 8(5) of that regulation.
First plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for may 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’.
17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see the judgment of 10 September 2008 in Case T‑325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 70 and the case-law cited; see also, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).
18 Further, it is common ground that the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see CAPIO, cited in paragraph 17 above, paragraph 71 and the case-law cited; see also, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 22; Canon, cited in paragraph 17 above, paragraph 16; and Lloyd Schuhfabrik Meyer, cited in paragraph 17 above, paragraph 18).
19 That global assessment implies some interdependence of the factors taken into account and, in particular, of the similarity of the marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks and vice versa. The interdependence of those factors is expressly referred to in recital 8 in the preamble to Regulation No 207/2009, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see CAPIO, cited in paragraph 17 above, paragraph 72 and the case-law cited).
20 Furthermore, the global assessment of the visual, aural or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 207/2009 – ‘there exists a likelihood of confusion on the part of the public’ – shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see CAPIO, cited in paragraph 17 above, paragraph 73 and the case-law cited; see also Case C‑254/09 P Klein Trademark Trust v OHIM [2010] ECR I‑0000, paragraph 45 and the case-law cited).
21 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 28, and Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38; see also, by analogy, Lloyd Schuhfabrik Meyer, paragraph 26).
22 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.
Earlier mark VR 2001 03359
23 In the present case, in paragraph 18 of the contested decision the Board of Appeal began its examination by considering the registration of earlier Danish trade mark VR 2001 03359. Since it is a Danish trade mark, the relevant public is the Danish public. Moreover, as the Board of Appeal found in paragraph 18 of the contested decision, since the goods in question are everyday consumer goods aimed at the general public, the relevant public is the reasonably well-informed and reasonably observant and circumspect consumer. Those findings have not been challenged by the applicant and must be upheld.
– Similarity of the goods
24 The position adopted by the Board of Appeal in paragraph 27 of the contested decision to the effect that the goods in question are identical has not been challenged by the applicant and must be upheld.
– Similarity of the signs
25 The applicant contests the Board of Appeal’s analysis of the likelihood of confusion since – according to the applicant – the Board of Appeal wrongly found that there was a low degree of visual similarity between the signs in question and no conceptual similarity between those signs.
26 It is clear from case-law that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30, and CAPIO, cited in paragraph 17 above, paragraph 89; see also, by analogy, SABEL, cited in paragraph 18 above, paragraph 23).
27 Further, according to established case-law, a compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark, unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public retains, with the result that all the other components of the mark are negligible within the overall impression created by it (judgment of 11 July 2006 in Case T‑247/03 Torres v OHIM – Bodegas Muga (Torre Muga), not published in the ECR, paragraph 46, and Case T‑287/06 Torres v OHIM – Bodegas Peñalba López (Torre Albéniz) [2008] ECR II‑3817, paragraph 48).
28 However, that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole (Torre Muga, cited in paragraph 27 above, paragraph 47, and Torre Albéniz, cited in paragraph 27 above, paragraph 49).
29 According to case-law, it is only if all the other components of the mark are negligible that similarity can be assessed solely on the basis of the dominant element (Case C‑498/07 P Aceites del Sur-Coosur v Koipe and OHIM [2009] ECR I‑7371, paragraph 62, and Case T‑385/09 Annco v OHIM – Freche et fils (ANN TAYLOR LOFT) [2011] ECR I‑0000, paragraph 35).
30 First, as regards the visual similarity, it should be noted that, as the Board of Appeal rightly observed in paragraphs 21 and 22 of the contested decision, the earlier mark is a word mark consisting exclusively of the word ‘only’, whereas the mark applied for is a complex mark, composed of various word and figurative elements on a coloured background. The signs at issue share the element ‘only’ but differ as a result of the other word elements present in the mark applied for, namely the words ‘givenchy’, ‘édition limitée limited edition’ and ‘paris eau de toilette vaporisateur – spray e50 ml 1.7 fl oz’, and as a result of the figurative elements constituted by the letters ‘o’, ‘n’, ‘l’ and ‘y’ in pink and green characters, the two first letters and the two last letters being placed on two different lines. Moreover, the letter ‘y’ also appears in the background in a very light grey in the same type-face as the letters ‘o’, ‘n’, ‘l’ and ‘y’.
31 In addition, it should be noted that the elements ‘édition limitée limited edition’ and ‘eau de toilette vaporisateur – spray e50 ml 1.7 fl oz’, as observed by the Board of Appeal in paragraph 24 of the contested decision without being challenged by the applicant, are secondary elements, since their sole function is to describe the kind of product concerned.
32 By contrast, the element ‘givenchy’ in the mark applied for is the distinctive and dominant element and is more eye-catching due to the manner in which it is printed, which makes it stand out, the element ‘only’, which is in light grey, being designed, as the Board of Appeal rightly observed in paragraph 22 of the contested decision, to highlight the element ‘givenchy’ and to reinforce the exclusive nature of that element by highlighting, in particular, its uniqueness. That word combination will be easily understood by the French speaking public as meaning ‘seulement givenchy’. The repetition of the element ‘only’ in the coloured figurative elements, the four letters of which are disconnected, also contributes to that visual impression in which the central place is given to the element ‘givenchy’. The fact that the earlier mark and the mark applied for both contain the element ‘only’ is of little consequence in the context of the overall comparison of those marks and does not in itself, contrary to what the applicant claims, permit the conclusion that there is a medium or high degree of visual similarity between the signs at issue.
33 In that regard, it should be borne in mind that the overall visual impression given by two marks which share a common element may be different, in particular where the comparison concerns a word mark, such as the earlier mark, and a mark composed of word and figurative elements, such as the mark applied for, which creates a visual impression that is distinct from the element ‘only’ in isolation (see, to that effect, Case T‑110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR II‑5275, paragraph 52, confirmed, on appeal, by Case C‑106/03 P Vedial v OHIM [2004] ECR I‑9573).
34 Moreover, the words ‘givenchy paris’ which appear below the mark only givenchy are designed to inform the consumer of the house brand, which is common practice as regards products such as those referred to in paragraph 3 above.
35 It follows that, as the Board of Appeal stated in paragraph 21 of the contested decision, the overall visual impression justifies the finding that the signs at issue are similar only to a low degree.
36 Second, as regards the aural comparison, in paragraph 25 of the contested decision the Board of Appeal found that there was a medium degree of aural similarity between the marks at issue, without being contradicted on that point by the applicant. That finding by the Board of Appeal must be upheld.
37 Third, as regards the conceptual comparison, in paragraph 29 of the contested decision the Board of Appeal considered that the presence of the common element ‘only’ in the signs at issue was not sufficient for it to be concluded that there was a high degree of conceptual similarity between those signs, given that that word, read in conjunction with the word ‘givenchy’, would give the latter word a laudatory and specific meaning. The Board of Appeal continued its assessment by ascertaining the role of the element ‘only’ in the earlier mark and concluded that that word did not have an independent distinctive role, so that the words ‘only givenchy’ in the mark applied for created a logical and conceptual unit, an inseparable whole, with a semantic value which was distinct from the word ‘only’ considered in isolation.
38 That analysis must be accepted and cannot be altered by the applicant’s claim that there is a high degree of conceptual similarity insofar as the two signs share the common element ‘only’ and the addition of the word ‘givenchy’ does not alter the meaning of the element ‘only’, which will be understood by the English-speaking public, unlike the word ‘givenchy’, which has no conceptual meaning for that public.
39 In that regard, it must be observed that the concepts suggested or conveyed by the words ‘only’ and ‘only givenchy’ are different. The combination of the element ‘only’, easily understood by the target public as an adverb or an adjective (one, alone, exclusively, solely), and the element ‘givenchy’, which has no meaning for that public, will enable it to perceive the laudatory expression as a whole as well as the exclusive nature of the product concerned, the element ‘only’ placing the element ‘givenchy’ in a specific context. The combination of those two elements thus creates a concept and a logical unit that is distinct from those of its individual components (see, to that effect, HUBERT, cited in paragraph 33 above, paragraph 57). The semantic value of that combination is not found, however, in the element ‘only’ considered in isolation.
40 Moreover, contrary to what the applicant claims, it cannot be accepted that the element ‘givenchy’ will be perceived as indicating a subsidiary or a licence-holder producing goods under the ONLY brand, since, as has already been found, the combination of the elements ‘only’ and ‘givenchy’ constitutes a conceptual unit within which ‘only’ is a laudatory qualifier of ‘givenchy’.
41 It follows from the foregoing that the Board of Appeal’s analysis relating to the similarity of the signs in question must be accepted.
– Likelihood of confusion
42 A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, cited in paragraph 26 above, paragraph 45).
43 In the present case, it has already been observed that the Board of Appeal rightly found that the goods in question are identical and that there is a slight degree of visual and conceptual similarity and a moderate degree of aural similarity between the signs in question.
44 When making an overall assessment of the signs at issue, the visual, aural and conceptual differences between them are sufficient, in spite of the identity of the goods designated, to preclude the resemblances between them from giving rise to a likelihood of confusion in the mind of the average consumer (see, to that effect, Torre Albéniz, cited in paragraph 27 above, paragraph 74). As is clear from paragraph 29 of the contested decision, the logical and conceptual unit of the mark applied for allows a sufficient distinction to be made between the signs at issue, ruling out any likelihood of confusion.
45 The applicant’s claim that the mark ONLY is highly distinctive and enjoys a reputation due to intensive use is not capable of calling that conclusion into question.
46 While it is settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, it should be noted that the likelihood of confusion presupposes that the signs and the goods or services covered are identical or similar, the reputation of a mark being a factor which must be taken into account when determining whether the similarity between the signs or between the goods or services is sufficient to give rise to a likelihood of confusion (see, to that effect, Canon, cited in paragraph 17 above, paragraphs 22 and 24).
47 However, as is clear from the notice of opposition which appears in OHIM’s case-file, the applicant has claimed a reputation only as regards earlier Community trade mark No 638 833 and earlier Danish trade mark VR 2000 02183, which cover goods in Classes 14, 18 and 25, but has not claimed a reputation nor proved intensive use as regards earlier Danish trade mark VR 2001 03359, which concerns identical goods.
48 In those circumstances, as regards earlier Danish trade mark VR 2001 03359, in view of the weak distinctive character of the word ‘only’, resulting from the fact that it is commonly used in the English language and is easily understood, even by the non-English-speaking public, the Board of Appeal was correct in finding that there was no likelihood of confusion.
The other earlier rights, namely Danish trade mark VR 2000 02183 and Community trade mark No 638 833
49 With regard to the two other earlier rights, namely Danish trade mark VR 2000 02183 and Community trade mark No 638 833, in paragraph 31 of the contested decision the Board of Appeal observed that those marks were also composed of the sign ‘only’, so that the comparison made in relation to the earlier marks also applied to those marks. That assessment must be endorsed and the findings made in paragraphs 25 to 41 above therefore apply as regards Danish trade mark VR 2000 02183 and Community trade mark No 638 833.
50 As regards the similarity of the goods in question, this Court finds – unlike the Board of Appeal, which concluded that those goods were, at most, similar – that the goods are different.
51 According to settled case-law, in order to assess the similarity of the goods or services, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑331/09 Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN) [2010] ECR I‑0000, paragraph 30 and the case-law cited).
52 It is clear that, in the present case, all the goods in Classes 14, 18 and 25 covered by the earlier Danish and Community trade marks VR 2000 02183 and No 638 833 are different, having regard to their nature, their intended purpose, their method of use and the lack of competition or complementarity, from the goods in Class 3, in particular soaps or perfumes. Moreover, their distribution channels are different. Indeed, it is clear that horological instruments, leather, imitations of leather and goods made of those materials and not included in other classes, animal skins, hides, trunks, travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery and, lastly, clothing, footwear and headgear do not satisfy any of the criteria set out in paragraph 51 above for establishing similarity with the goods in Class 3.
53 It follows that there can be no likelihood of confusion, since, even if the earlier marks had acquired a high degree of distinctiveness, the goods set out in paragraph 6 above designated by earlier Danish and Community trade marks VR 2000 02183 and No 638 833 are, as the Opposition Division had already stated, different from those covered by the mark applied for, so that one of the conditions of Article 8(1) of Regulation No 207/2009, namely that the goods be similar, is not met.
54 It follows from all of the foregoing that the applicant’s first plea must be rejected.
Second plea, alleging infringement of Article 8(5) of Regulation No 207/2009
55 The applicant claims, in essence, that, due to the reputation of its earlier marks, the use without due cause of the mark applied for could take unfair advantage of, or be detrimental to, the distinctive character or the repute of those marks.
56 Article 8(5) of Regulation No 207/2009 provides that, ‘upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall 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’.
57 According to case-law, it is apparent from Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: first, that the marks at issue are identical or similar; secondly, that the earlier mark cited in opposition has a reputation and, thirdly, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (Case T‑67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II‑1825, paragraph 30, and Case T‑215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 34).
58 In order to better define the risk referred to in Article 8(5) of Regulation No 207/2009, it must be pointed out that the primary function of a mark is unquestionably that of an ‘indication of origin’ (recital 8 in the preamble to Regulation No 207/2009). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure or youth. To that effect, the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (VIPS, cited in paragraph 57 above, paragraph 35).
59 Moreover, according to case-law, the various infringements referred to by Article 8(5) of Regulation No 207/2009 are the consequence of a certain degree of similarity between the earlier mark and the mark in respect of which registration is sought, by virtue of which the relevant section of the public makes a connection between those two marks, even though it does not confuse them. The existence of a link between the mark in respect of which registration is sought and the earlier mark, which must be assessed globally, taking into account all factors relevant to the circumstances of the case, is thus an essential condition for applying that provision (judgment of 10 May 2007 in Case T‑47/06 Antartica v OHIM – Nasdaq Stock Market (nasdaq), not published in the ECR, paragraph 53, confirmed, on appeal, by judgment of 12 March 2009 in Case C‑320/07 P Antartica v OHIM, not published in the ECR; see also Case C‑408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I‑12537, paragraphs 29, 30 and 38; Case C‑252/07 Intel Corporation [2008] ECR I‑8823, paragraphs 57, 58 and 66; and Case C‑552/09 P Ferrero v OHIM [2011] ECR I‑0000, paragraph 53).
60 Those factors include: (i) the degree of similarity between the conflicting marks; (ii) the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; (iii) the strength of the earlier mark’s reputation; (iv) the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and (v) the existence of the likelihood of confusion on the part of the public (Intel Corporation, paragraph 42).
61 The applicant submits that the Board of Appeal was incorrect in finding that the public would be unable to establish a link or connection between the signs at issue, on the ground that the word element ‘only’ would not be considered by the consumer in isolation. According to the applicant, the Board of Appeal failed to take account of all the relevant factors.
62 First, it must be borne in mind that the examination of Article 8(5) of Regulation No 207/2009 was carried out, in the course of the administrative procedure, only with regard to earlier Danish trade mark VR 2000 02183 and earlier Community trade mark No 638 833, and the goods covered by those marks are, as stated in paragraphs 51 and 52 above, different from those covered by the mark applied for.
63 The Board of Appeal found in paragraph 36 of the contested decision that the similarities between the signs at issue could not give rise to a connection between them because the element ‘only’, which is the sole element in the two earlier marks mentioned above, had no independent distinctive role in the mark applied for and it would not therefore be considered in isolation.
64 That finding must be upheld.
65 There is a slight degree of visual and conceptual similarity between the signs at issue and a moderate degree of aural similarity. Even if earlier Danish and Community trade marks VR 2000 02183 and No 638 833 had a reputation, the differences between those signs, in particular due to the conceptual unit created by the combination of the element ‘only’ and the distinctive dominant element ‘givenchy’, are significant enough for the public not to make any connection between them.
66 Therefore, the Board of Appeal was correct in finding that one of the conditions for applying Article 8(5) of Regulation No 207/2009, namely that the signs be sufficiently similar to lead the relevant public to make a connection between them, has not been met and that the claim alleging infringement of that provision is unfounded, with the result that there is no need to examine the other conditions in Article 8(5) of Regulation No 207/2009.
67 Accordingly, the action must be dismissed without there being any need to rule on the admissibility of the applicant’s claims that the Court should refuse to register the mark applied for and that the Opposition Division’s decision of 22 October 2009 should be annulled (see, to that effect, Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 46, and the judgment of 11 June 2009 in Case T‑67/08 Hedgefund Intelligence v OHIM – Hedge Invest (InvestHedge), not published in the ECR, paragraph 58).
Costs
68 Under Article 87(2) 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 OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Aktieselskabet af 21. november 2001 to pay the costs.
Truchot | Martins Ribeiro | Kanninen |
Delivered in open court in Luxembourg on 8 December 2011.
[Signatures]