JUDGMENT OF THE GENERAL COURT (First Chamber)

2 December 2015 (*)

(Community trade mark — Opposition proceedings — International registration designating the European Community — Word mark KENZO ESTATE — Earlier Community word mark KENZO — Relative ground for refusal — Reputation — Article 8(5) of Regulation (EC) No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009 — Partial rejection of the opposition)

In Case T‑528/13,

Kenzo, established in Paris (France), represented by P. Roncaglia, G. Lazzeretti, F. Rossi and N. Parrotta, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Kenzo Tsujimoto, residing in Osaka (Japan), represented by A. Wenninger-Lenz, W. von der Osten-Sacken and M. Ring, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 3 July 2013 (Case R 1363/2012-2), relating to opposition proceedings between Kenzo and Mr K. Tsujimoto,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 30 September 2013,

having regard to the response of OHIM lodged at the Court Registry on 14 January 2014,

having regard to the response of the intervener lodged at the Court Registry on 31 January 2014,

having regard to the reply lodged at the Court Registry on 2 May 2014,

having regard to the rejoinder of the intervener lodged at the Court Registry on 18 August 2014,

having regard to the Court’s written question to the parties regarding the judgments of 22 January 2015 in Tsujimoto v OHIM — Kenzo (KENZO) (T‑322/13, EU:T:2015:47) and Tsujimoto v OHIM — Kenzo (KENZO) (T‑393/12, EU:T:2015:45),

having regard to the replies to the Court’s question lodged by the parties at the Court Registry on 17 and 25 June 2015,

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 of 2 May 1991,

gives the following

Judgment

 Background to the dispute

1        On 18 August 2009, Mr Kenzo Tsujimoto, the intervener, filed an application for an international registration designating the European Community, notification of which was given to 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 KENZO ESTATE.

3        The goods and services in respect of which registration was sought are in Classes 29, 30, 31, 35, 41 and 43 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: ‘Olive oil (for food); grape seed oil (for food); edible oils and fats; raisins; processed vegetables and fruits; frozen vegetables; frozen fruits; raw pulses; processed meat products; processed seafood’;

–        Class 30: ‘Confectionery, bread and buns; wine vinegar; olive dressing; seasonings (other than spices); spices; sandwiches; pizzas; hot dogs (sandwiches); meat pies; ravioli’;

–        Class 31: ‘Grapes (fresh); olives (fresh); fruits (fresh); vegetables (fresh); seeds and bulbs’;

–        Class 35: ‘Marketing research on wine; providing information on wine sales; advertising and publicity services; import-export agencies; retail services or wholesale services for foods and beverages; retail services or wholesale services for liquor’;

–        Class 41: ‘Educational and instruction services relating to general knowledge of wine; educational and instruction services relating to general knowledge of obtaining the sommelier certification; arranging and conducting of examination of wine and simulation test thereof; testing and certifying of sommelier certification; arranging, conducting and organization of seminars on wine; arranging, conducting and organization of seminars on sommelier certification; providing electronic publications on wine; providing electronic publications on sommelier certification; publication of books on wine; publication of books on sommelier certification; providing facilities for educational training on wine; providing facilities for educational training on sommelier certification’;

–        Class 43: ‘Providing foods and beverages; providing temporary accommodation’.

4        The application for registration was published in Community Trade Marks Bulletin No 44/2009 of 16 November 2009.

5        On 12 August 2010, the applicant, Kenzo, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to the registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

6        The opposition was based on the earlier Community word mark Kenzo, which was registered on 20 February 2001 under the number 720706 in respect of goods in, inter alia, Classes 3, 18 and 25 corresponding, for each of those classes, to the following description:

–        Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; toothpaste’;

–        Class 18: ‘Leather and imitations of leather, belts, bags, hand bags, trunks and suitcases, sling bags, travelling bags and other luggage; leashes, pocket wallets, briefcases, pouches (leatherware), purses, key cases (leatherware), boxes and cases of leather, imitations of leather, card holders, cheque book holders, attaché cases, make-up cases, travelling sets (leatherware); toilet and make-up bags (not fitted), animal skins, hides; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

–        Class 25: ‘Clothing, footwear (except orthopaedic footwear), headgear’.

7        The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation No 207/2009.

8        By decision of 24 May 2012, the Opposition Division rejected the opposition.

9        On 23 July 2012, the applicant 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 3 July 2013 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal in part. According to the Board of Appeal, the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 were satisfied in the circumstances in respect of the services covered by the registration applied for. As regards the first condition, the Board of Appeal observed that the marks at issue were highly similar. As regards the second condition, the Board of Appeal found, contrary to the Opposition Division, that the applicant had established that the earlier trade mark had a reputation. Regarding the third condition, the Board of Appeal found, in respect of the services covered by the registration applied for, that it seemed highly likely that the mark in respect of which registration was sought, for the use of which no due cause had been demonstrated, would ride on the coat-tails of the earlier trade 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 mark in order to create and maintain the mark’s image. By contrast, the Board of Appeal found, with regard to the goods in Classes 29 to 31 covered by the registration applied for, that they were not regarded as luxury goods and that they were not invariably associated with the world of glamour or fashion. It took the view that they are common mass-consumed foodstuffs that are bought in any corner shop and that they have only a peripheral relation with the applicant’s goods. It found that the applicant had failed to justify why the registration applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The Board of Appeal rejected the opposition in respect of those goods.

 Forms of order sought

11      The applicant claims that the Court should:

–        Annul the contested decision in so far as it granted the application for registration in respect of the goods in Classes 29 to 31;

–        order OHIM to pay the costs;

–        order the intervener to pay the costs incurred by the applicant before the Opposition Division and the Board of Appeal of OHIM.

12      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant relies on two pleas in law alleging (i) infringement of Article 75 of Regulation No 207/2009 and (ii) infringement of Article 8(5) of that regulation.

 The first plea, alleging infringement of Article 75 of Regulation No 207/2009

14      The applicant submits that the Board of Appeal did not explain in detail the reasons which led it to reject the opposition in respect of the goods in Classes 29 to 31. It maintains that the Board of Appeal did not address its arguments with respect to the detrimental effects that the use of the contested mark may cause to the reputation, the distinctiveness and the image of the earlier mark.

15      OHIM and the intervener dispute the applicant’s arguments.

16      Under Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based.

17      According to settled case-law, that obligation has the same scope as that laid down in Article 296 TFEU. The statement of reasons required by that article must set out clearly and unequivocally the reasoning of the body which adopted the act in question. The purpose of that obligation is twofold: first, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see, to that effect, judgment of 12 November 2008 in Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, ECR, EU:T:2008:481, paragraph 73 and the case-law cited).

18      In the present case, the Board of Appeal stated, in paragraph 52 of the contested decision, that, in its view, the goods in Classes 29 to 31 covered by the registration applied for are not typically regarded as luxury goods. It stated that those goods are common mass-consumed foodstuffs and added that they have only a peripheral relation with the goods covered by the earlier mark. It concluded that the applicant had failed to justify why the registration applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

19      By those explanations, the Board of Appeal enabled the applicant to understand the reasons why it rejected the opposition in respect of the goods in Classes 29 to 31 covered by the registration applied for.

20      In so doing, it is not apparent that the Board of Appeal failed to comply with its obligation to state reasons.

21      It must be added that, although the Board of Appeal did not provide more detailed statements regarding the applicant’s arguments with respect to the detrimental effects that the use of the contested mark might cause to the reputation, the distinctiveness and the image of the earlier mark, it cannot, however, be criticised for not having stated more detailed reasons for its decision.

22      The Boards of Appeal are not obliged, in stating the reasons for the decisions which they are led to adopt, to take a view on all the arguments which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (judgment of 30 June 2010 in Matratzen Concord v OHIM — Barranco Schnitzler (MATRATZEN CONCORD), T‑351/08, EU:T:2010:263, paragraph 18).

23      It follows that the first plea must be rejected.

 The second plea, alleging infringement of Article 8(5) of Regulation No 207/2009

24      First, the applicant submits that the Board of Appeal should have distinguished the goods in Classes 29 to 31 that cannot be regarded as luxury goods, such as hot dogs and meat pies, from the other goods, such as olive oils and vinegar, which may evoke images of glamour, success and social status. It maintains that the Board of Appeal should have concluded that, with regard to the latter goods, the contested mark would take an unfair advantage of the reputation of the earlier mark.

25      Secondly, the applicant submits that the use of the contested mark in connection with goods which the Board of Appeal categorised as ‘common mass-consumed foodstuffs that are bought in any corner shop’ would affect and dilute the distinctiveness and the reputation of the earlier mark. The applicant adds, in that regard, that the use of the contested mark in connection with many goods in Classes 29 to 31 which are covered by the registration applied for, such as pizzas, hot dogs, sandwiches and meat pies, which are associated with a bad diet, implies a detriment to the reputation of the earlier mark.

26      In the first place, OHIM maintains that the Board of Appeal rightly found that the goods covered by the registration applied for cannot be regarded as sophisticated luxury goods to which the positive image enjoyed by the earlier mark could be transferred. In OHIM’s view, the applicant confines itself to statements which are not supported by any evidence when it maintains that olive oil and wine vinegar are connected with the idea of luxury and exclusivity. OHIM submits that the fact that many foodstuffs might be presented in ways that evoke luxury and glamour is not conclusive since that is merely due to a marketing choice. It takes the view that the applicant’s example does not take into account the nature of the goods concerned and the normal circumstances in which they are marketed. OHIM maintains that edible oils and vinegar are basic household ingredients that are bought quite frequently, notwithstanding the fact that olive oils and vinegar may vary in quality and price.

27      In the second place, OHIM claims that, as regards the alleged detriment to the distinctive character of the earlier mark, the applicant confined itself to statements which are not supported by any evidence and did not explain how a change in the economic behaviour of the average consumer of the goods covered by the earlier mark would be likely.

28      In the third place, OHIM submits that the nature and inherent characteristics of the goods covered by the registration applied for are not incompatible with the positive image associated with the earlier mark. OHIM takes the view, as regards the argument that some goods are associated with a bad diet, that those goods may also be regarded as healthy depending on their ingredients and preparation methods and that it is incorrect to assume as a starting point that they are inherently incompatible with the image associated with the earlier mark, since they are also sold in department stores.

29      The intervener takes the view that the conditions for the application of Article 8(5) of Regulation No 207/2009 are not satisfied. He maintains that not only are the marks at issue neither identical nor similar and the reputation of the earlier mark is not established, but that, in addition, the mark in respect of which registration is sought would not take unfair advantage of the distinctive character or the repute of the earlier mark. He submits that the goods for which it is claimed that the earlier mark has a reputation, namely cosmetics, perfumes and clothes are directed at a very different public and have a very different nature than the goods covered by the registration applied for. He maintains that there is no correlation between the marks at issue.

30      In that regard, it must be pointed out that the various infringements covered 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 marks, that is to say, establishes a link between them even though it does not confuse them. The existence of a link between the mark applied for and the earlier mark, which must be appreciated globally, taking into account all factors relevant to the circumstances of the case, is an essential condition for the application of that provision. Those factors include the degree of similarity between the marks 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 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 judgment of 27 September 2012 in El Corte Inglés v OHIM — Pucci International (Emidio Tucci), T‑373/09, EU:T:2012:500, paragraph 63 and the case-law cited).

31      It must be added that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must, however, adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see judgment in Emidio Tucci, cited in paragraph 30 above, EU:T:2012:500, paragraph 64 and the case-law cited).

32      It must be stated that, in accordance with the case-law, it is possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment to or unfair advantage being taken of the earlier mark by the mark in respect of which registration is sought is so obvious that the opposing party does not need to put forward and prove any other fact to that end. However, it cannot be assumed that this is always the case. Indeed, it is possible that the mark in respect of which registration is sought does not, at first sight, appear capable of giving rise to one of the three types of risk covered by Article 8(5) of Regulation No 207/2009 with respect to the earlier mark with a reputation, even though it is identical with or similar to the earlier mark. In those circumstances, the opposition must be rejected as unfounded unless such a non-hypothetical, future risk of detriment or unfair advantage can be established by other evidence which it is for the opponent to put forward and prove (see judgment in Emidio Tucci, cited in paragraph 30 above, EU:T:2012:500, paragraph 65 and the case-law cited).

33      As regards the goods in Classes 29 to 31 covered by the registration applied for, even though they are all different from those covered by the earlier mark, some of them may be among the goods sold as luxury goods under renowned manufacturers’ marks with a reputation. That is true of olive oil and wine vinegar, but also of all the goods which may be marketed in elegant hampers, as the applicant rightly points out. That shows that there is a certain closeness between those goods and those covered by the earlier mark, in particular in the luxury goods sector. In the light of that closeness, and also of the high degree of similarity between the marks at issue and the distinctive character and reputation of the earlier mark, it must be held that there is a link between the signs at issue and that, contrary to what the Board of Appeal found, there is a risk that the intervener may take advantage of the link which exists between the mark in respect of which registration is sought and the earlier mark in order to associate his sign with the renown of the earlier mark and take unfair advantage of that mark’s reputation, benefitting from the image of luxury and exclusivity which that mark conveys.

34      It must be added that the fact that the goods at issue are sold, under normal circumstances or principally, by large retailers, which is a marketing strategy which may vary over time according to the wishes of the proprietors of the mark in respect of which registration is sought, in no way detracts from the fact that the protection of that mark, if registration were to be allowed, would extend to all the goods in question, with the result that the relevant public must be defined with respect to all of those goods, and therefore also with respect to those sold as luxury goods (see, to that effect, judgment of 9 March 2012 in Ella Valley Vineyards v OHIM — HFP (ELLA VALLEY VINEYARDS), T‑32/10, ECR, EU:T:2012:118, paragraph 29 and the case-law cited).

35      As regards the goods which are associated more with everyday consumer goods, or even with a bad diet, the arguments submitted by the applicant are sufficient to establish that the registration applied for in respect of those goods could be detrimental to the reputation of the earlier mark (see, to that effect, judgment in Emidio Tucci, cited in paragraph 30 above, EU:T:2012:500, paragraph 67).

36      Contrary to what the Board of Appeal stated and as the applicant rightly points out, the registration of the mark applied for in respect of such goods could damage the image of exclusivity, luxury and high quality associated with the earlier mark. Given the high degree of similarity between the marks at issue and the distinctive character and reputation of the earlier mark, it must be held that there is a link between the marks at issue. The consumer of the goods covered by the earlier mark is likely to make an association between those goods and those covered by the mark applied for which could damage the image of exclusivity, luxury and high quality conveyed by the earlier mark and therefore be detrimental to the distinctive character and the reputation of the earlier mark.

37      Such a finding cannot be rebutted by the arguments of the intervener, who confines himself, in that regard, to referring to the arguments which he set out in the context of the action which he brought before the Court and which was registered as Case T‑522/13.

38      Such a laconic formulation of those arguments cannot be taken into consideration, without other information in support, bearing in mind that the intervener has not, moreover, even communicated, as an annex to his written pleadings, the application lodged in Case T‑522/13 and that, even if he had done so, it would be contrary to the purely evidential and instrumental function of annexes to allow them to provide the detail of an argument which is not presented in a sufficiently clear and precise manner (see, by analogy, judgment of 14 March 2013 in Fresh Del Monte Produce v Commission, T‑587/08, ECR, EU:T:2013:129, paragraph 542 and the case-law cited). The intervener’s arguments must therefore be declared inadmissible.

39      In the light of all of the foregoing, the second plea put forward by the applicant must be held to be well founded and, consequently, the contested decision must be annulled in so far as it rejected the opposition in respect of the goods covered by the registration applied for.

 Costs

40      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.

41      As OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant. OHIM and the intervener are to be ordered to bear the costs which each of them has respectively incurred in the course of the present proceedings.

42      Furthermore, the applicant also claimed that the intervener should be ordered to pay the costs incurred for the purposes of the proceedings before OHIM. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the applicant’s request that the intervener, having been unsuccessful, be ordered to pay the costs incurred in the course of the proceedings before OHIM can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal. Since the present proceedings relate to only a part of the contested decision, the intervener is to be ordered to bear his costs and to pay half of the costs incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 3 July 2013 (Case R 1363/2012-2) in so far as it rejected the opposition in respect of the goods in Classes 29 to 31 covered by the international registration applied for;

2.      Orders OHIM to pay the costs incurred by Kenzo in the course of the present proceedings;

3.      Orders OHIM and Mr Kenzo Tsujimoto to bear the costs which each of them has respectively incurred in the course of the present proceedings;

4.      Orders Mr K. Tsujimoto to bear his costs and to pay half of the costs incurred by Kenzo for the purposes of the proceedings before the Board of Appeal of OHIM.

Kanninen

Pelikánová

Buttigieg

Delivered in open court in Luxembourg on 2 December 2015.

[Signatures]