JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

28 September 2016 (*)

(EU trade mark — Invalidity proceedings — EU word mark HENLEY — Earlier United Kingdom and EU word marks HENLEYS — Article 8(5) of Regulation (EC) No 207/2009 — Taking unfair advantage of the distinctive character or the repute of the earlier mark)

In Case T‑362/15,

The Lacamanda Group Ltd, established in Manchester (United Kingdom), represented by C. Scott, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

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

Nigel Woolley, residing in Braceborough (United Kingdom), represented by S. Malynicz, Barrister,

intervener,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 April 2015 (Case R 2255/2012-4), relating to invalidity proceedings between The Lacamanda Group and Nigel Woolley,

THE GENERAL COURT (Fourth Chamber),

composed, at the time of deliberation, of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 1 July 2015,

having regard to the response of EUIPO lodged at the Court Registry on 29 October 2015,

having regard to the response of the intervener lodged at the Court Registry on 20 October 2015,

having regard to the fact that no application for a hearing was submitted by the main parties within the period of three weeks following service on the parties of notification of the closure of the written part of the procedure and having decided, pursuant to Article 106(3) of the Rules of Procedure of the General Court, to rule on the action without an oral part of the procedure,

gives the following

Judgment

 Background to the dispute

1        On 25 November 2005, the intervener, Mr Nigel Woolley, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 European Union trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the word sign HENLEY (‘the contested mark’).

3        The goods in respect of which registration was sought are in Classes 9, 14 and 18 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 9: ‘Optical apparatus and instruments; binoculars and telescopes, spectacles, sunglasses, visors, monocles, cases and pouches for spectacles for sunglasses and for visors; frames, glasses, shields, chains, cords, mountings, holders and lenses, all for spectacles or sunglasses or visors; devices for protecting the eyes against injury or accidents; eye shades, protective face-shields, goggles; contact lenses; parts and fittings for all the aforesaid goods’;

–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith; models in precious metals; jewellery, imitation jewellery, costume jewellery; precious stones; pearls; tie clips, tie tacks, money clips; key rings, fobs, trinkets, pendants, rings, bracelets, charms, necklaces, earrings, chains, pins, badges, buttons, lapel pins, money clips, cuff links; horological and chronometric instruments, including timepieces, clocks and watches; watch straps, bands and chains; parts and fittings for the aforesaid goods’;

–        Class 18: ‘Leather and imitations of leather and goods made of these materials; animal skins, hides, furs; gut for making sausages; luggage, including trunks, travelling bags and suitcases; leather furniture covers; umbrellas, parasols, canes and walking sticks; whips, harness and saddlery; bags, wallets, cases; credit and business card holders, key fobs, key holders, key cases, key pouches; music cases; tool bags, sports bags, beach bags, school bags, shopping bags, bags on wheels, shopping nets, handbags, game bags for hunting, nose bags, garment bags for travel; vanity cases; bags for cosmetics, make-up brushes and cosmetic articles; belts; boxes; laces; pouches; purses, including chain-mesh purses; briefcases, attache cases, satchels; business card cases; straps; thongs; haversacks, backpacks and rucksacks; valises; clothing, collars, leads, leashes, muzzles, all for animals; animal covers, horse blankets; umbrella covers; parts and fittings for all the aforesaid goods’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 28/2006 of 10 July 2006. The contested mark was registered on 25 January 2007 under No 4 743 563.

5        On 27 October 2009, the applicant, The Lacamanda Group, filed an application for a declaration of invalidity against the contested mark, pursuant to Articles 52(1)(a) and 53(1) of Regulation No 207/2009, read in conjunction, first, with Article 7(1)(b)(c) and (d) of Regulation No 207/2009 and, secondly, Article 8(5) of that regulation, in that the contested mark constituted, first, a geographical indication of origin, secondly, lacked distinctive character, thirdly, consisted of an indication which has become customary in the current language of the trade and, fourthly, since the contested mark was very similar to the earlier marks of which the applicant was the proprietor, it adversely affected their reputation.

6        The Lacamanda Group’s application for a declaration of invalidity was based on the following earlier marks:

–        United Kingdom (U.K.) word mark HENLEYS, filed on 17 May 2005 and registered on 23 June 2006, under No 2 392 090, covering, inter alia, goods in Classes 25 and 35, corresponding respectively, for each of those classes, to the following descriptions: ‘T-shirts, jeans, shirts, skirts, trousers, jackets’ and ‘The bringing together, for the benefit of others, a variety of T-shirts, jeans, shirts, skirts, trousers and jackets, enabling customers to conveniently view and purchase those goods from a clothing catalogue by mail order or by means of telecommunications, or from an Internet website specialising in these goods’.

–        the Community word mark HENLEYS, filed on 20 June 2006 and registered on 31 May 2007, under No 5 148 499, covering, inter alia, goods in Classes 25 and 35, corresponding, for each of those classes, to the following descriptions: ‘Articles of clothing; underwear, headgear’ and ‘The bringing together, for the benefit of others, of a variety of articles of clothing, underw[ear] and headgear, enabling customers to conveniently view and purchase those goods from a clothing store or clothing section in a department store, from a clothing catalogue by mail order, or from a website specialising in clothing’.

7        By decision of 11 October 2012, the Cancellation Division dismissed the application for a declaration of invalidity against the contested mark, finding that that mark had not been registered in breach of Article 7(1)(b)(c) and (d) and Article 8(5) of Regulation No 207/2009.

8        The applicant filed a notice of appeal against that decision, pursuant to Article 58 et seq. of Regulation No 207/2009.

9        By decision of 24 April 2015 (‘the contested decision’), the Fourth Board of Appeal dismissed the applicant’s appeal, finding that the contested mark had not been registered in breach of either Article 7(1)(b), (c), and (d) or Article 8(5) of Regulation No 207/2009.

10      In particular, the Board of Appeal found that:

–        as regards the alleged infringement of Article 7(1)(c) of Regulation No 207/2009, it was unnecessary to assess whether the town of Henley-on-Thames (United Kingdom) was known for the annual royal regatta and the term ‘HENLEY’ designated a specific dress-code, associated with it, since the goods designated by the contested mark did not comprise clothing in Class 25;

–        the town of Henley-on-Thames was not known for the goods referred to in paragraph 3 above and it was not reasonably foreseeable that it be would in the future; in addition, the fact that a town is known for a sporting event did not mean that the name of that town would be perceived by the relevant public as an indicator of the geographical origin for all possible goods, especially not when those goods were not typical, as was the case of the goods in Classes 18 and 25;

–        as regards the alleged infringement of Article 7(1)(b) of that regulation, for the same reasons as those for which the contested mark was not descriptive, it also ought not to be considered devoid of distinctive character;

–        as regards the alleged infringement of Article 7(1)(d) of that regulation, the applicant had put forward no reasons in support of its appeal before the Board;

–        as regards the alleged infringement of Article 8(5) of Regulation No 207/2009, neither actual harm to the earlier mark’s repute nor a likelihood of unfair advantage or detriment to the earlier mark’s repute or distinctive character had been demonstrated and, consequently, since one of the cumulative conditions for the application of that provision had not been satisfied, it was not necessary to assess that mark’s repute.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener claims that the Court should:

–        uphold the contested decision;

–        order the applicant to pay the costs.

 Law

14      In support of its action, the applicant puts forward three pleas in law: (i) infringement of Article 7(1)(c), (ii) infringement of Article 7(1)(b) and (iii) infringement of Article 8(5) of Regulation No 207/2009, respectively.

15      The Court considers that the third plea in law must be examined first.

16      In the context of the third plea in law, the applicant submits, first, that the Board of Appeal analysed only one of the cumulative conditions for applying Article 8(5) of Regulation No 207/2009, failing to take into account the influence which the degree of similarity between the marks at issue and the strength of the earlier mark’s reputation, which are very considerable, would have on the risk of injury to the latter. Secondly, it submits that, given that the marks are almost identical and the substantial reputation of the earlier mark, the relevant public will establish a link between the two marks and will be confused as to the trade origin of the goods covered by the contested mark, which would damage the applicant’s exclusive rights.

17      While acknowledging the influence of the high degree of similarity between the marks at issue and of the earlier mark’s reputation on the application of the final condition for applying Article 8(5) of Regulation No 207/2009, EUIPO counters that the Board of Appeal’s analysis can be taken to have assumed a high degree of reputation and similarity of the marks. Even in such a case, the condition relating to the existence of injury to the distinctive character or reputation of the earlier mark is not met. For each type of injury, a vital criterion is lacking. The intervener disputes in essence that the earlier mark enjoyed an impressive reputation.

18      Article 8(5) of Regulation No 207/2009 provides that, ‘[f]urthermore, 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 EU trade mark, the trade mark has a reputation in the Union 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’.

19      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 European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 to 35, and 29 October 2015, Éditions Quo Vadis v OHMI — Gómez Hernández (‘QUO VADIS’), T‑517/13, not published, EU:T:2015:816, paragraph 22).

20      In addition, as regards the strength of the reputation and the degree of distinctive character of the earlier mark, it has been held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 39 and the case-law cited).

21      In that regard, it should be borne in mind that, while it is one of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009, the reputation of the earlier trade mark and, in particular, the strength of that reputation is one of the factors to be taken into account in the assessment both of whether there is an association on the part of the public between the earlier trade mark and the contested mark and of whether there is a risk that one of the three types of injury referred to in that provision may occur (see judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling), T‑627/13, not published, EU:T:2015:740, paragraph 81 and the case-law cited).

22      Accordingly, assessing whether the earlier trade mark has a reputation is an essential step in examining whether Article 8(5) of Regulation No 207/2009 is applicable. Consequently, the application of that provision necessarily requires a definitive conclusion regarding whether or not such a reputation exists, which, in principle, means that no analysis regarding the possible application of that provision can be carried out on the basis of a vague hypothesis, that is to say, a hypothesis which is not based on the acknowledgement of a reputation with a specific level of strength (judgment of 2 October 2015, Darjeeling, T‑627/13, not published, EU:T:2015:740, paragraph 82).

23      In the present case, it must be found that the Board of Appeal restricted itself to analysing the condition relating to the existence of one of the three types of risk of injury to the trade mark with a reputation, mentioned in paragraph 19 above, in characterising the assessment of the earlier mark’s reputation as unnecessary, in point 42 of the contested decision, on the basis of the cumulative nature of the conditions for applying Article 8(5) of Regulation No 207/2009. In that regard, it is apparent from reading the contested decision that the Board of Appeal neither concluded that the earlier mark enjoyed a reputation nor made an assumption based on the acceptance of a reputation of a specific strength nor, indeed, adopted the detailed analysis which had been carried out by the Cancellation Division on the earlier mark’s reputation.

24      Consequently, in excluding the application of Article 8(5) of Regulation No 207/2009 without examining the earlier mark’s reputation, the Board of Appeal infringed that provision.

25      In addition, it must be noted that the General Court is not entitled itself to assess the degree of reputation of the earlier mark, since it is settled case-law that, in accordance with Article 65(2) of Regulation No 207/2009, the General Court carries out a review of the legality of the decisions of EUIPO. If it holds that such a decision, called into question in an action brought before it, is vitiated by illegality, it must annul it. It may not, however, dismiss the action while substituting its own reasoning for that of the competent adjudicating body of EUIPO which is the author of the contested act (see, to that effect, judgment of 30 September 2015, Tilda Riceland Private v OHIM — Siam Grains (BASmALI), T‑136/14, EU:T:2015:734, paragraph 33 and the case-law cited).

26      It follows from all the foregoing that the third plea in law must be upheld, as must the action in its entirety, and there is no need to analyse the remaining pleas in law.

 Costs

27      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.

28      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those of applicant, in accordance with the form of order sought by the latter.

29      However, in the circumstances of the present case, the intervener must be ordered to bear his own costs in accordance with Article 138(3) of the Rules of Procedure.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 April 2015 (Case R 2255/2012-4);

2.      Orders EUIPO to bear its own costs and to pay those of The Lacamanda Group Ltd;

3.      Orders Mr Nigel Woolley to bear his own costs.

Prek

Labucka

Kreuschitz

Delivered in open court in Luxembourg on 28 September 2016.

[Signatures]