Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (First Chamber)

28 October 2016 (*)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark UNICORN — Earlier national word and figurative marks UNICORN and earlier national figurative mark representing a unicorn’s head — Relative ground for refusal — Reputation — Article 8(5) of Regulation (EC) No 207/2009)

In Case T‑124/15,

Unicorn a.s., established in Prague (Czech Republic), represented by L. Lorenc, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Mercilink Equipment Leasing Ltd, established in Limassol (Cyprus),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 January 2015 (Case R 149/2014-5), concerning opposition proceedings between Unicorn and Mercilink Equipment Leasing,

THE GENERAL COURT (First Chamber),

composed, at the time of the deliberation, 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 18 March 2015,

having regard to the response lodged at the Court Registry on 30 June 2015,

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

gives the following

Judgment

 Background to the dispute

1        On 4 July 2012, Mercilink Equipment Leasing Ltd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 following figurative sign:

3        The goods and services in respect of which registration was sought are in Classes 4, 35 and 37 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:

–        Class 4: ‘Industrial oils and greases; lubricants; fuels (including motor spirit) and illuminants; carburants, mineral fuel, fuel oil, fuel gas, diesel oil, gas oil, petrol, gasoline, mazut, motor fuel, motor oil, ethanol (fuel), liquefied petroleum gas (LPG), compressed natural gas (CNG), butane, propane, non-chemical additives to motor-fuel’;

–        Class 35: ‘Retail services in the fields of industrial oils and greases, lubricants and fuels, food and beverages, cigarettes and smokers’ articles, cleaning products, hygiene articles, games and playthings, telephone cards, tools and printed matter’;

–        Class 37: ‘Repair and installation services; vehicle service stations (refuelling and maintenance), vehicle maintenance, vehicle lubrication, vulcanization of tires (repair), retreading of tires, vehicle wash, vehicle polishing, vehicle cleaning, repair information’.

4        On 27 November 2012, the applicant, Unicorn a.s., 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.

5        The opposition was based on the following earlier rights:

–        the Czech word mark UNICORN, which was filed on 21 December 1993 and registered on 26 April 1995 under the number 184507 in respect of goods and services in Classes 9 and 35;

–        the Czech word mark UNICORN, which was filed on 30 November 2006 and registered on 30 April 2007 under the number 289840 in respect of goods and services in Classes 9, 16, 35 to 38, 41 and 42 corresponding, for Classes 37 and 42, to the following description:

–        Class 37: ‘Service, installation and maintenance electrical and electronic devices and equipment, especially computer and communication technology’;

–        Class 42: ‘Computer software — computer programming, making all kinds of software on demand, research, development and design software, computer systems analysis, management and recovery of computer data and software leasing computer equipment, advice and consultancy in the field of hardware and software, programming services — installation and service in the field of computer software’;

–        the Czech figurative mark reproduced below, which was filed on 26 January 2004 and registered on 29 November 2004 under the number 267669 in respect of goods and services in Classes 9, 37 and 42 corresponding, for Classes 37 and 42, to the following description:

–        Class 37: ‘Installation and service in computer hardware sphere’;

–        Class 42: ‘Formation of computer software — computer programming, manufacturing software of all kind upon order, research, software development and designing, computer system analyses, regeneration and management of computer data, hire of software, advisory and consulting services in the field of hardware and software, installation and service works in computer software sphere’;

–        the Czech figurative mark reproduced below, which was filed on 21 December 1993 and registered on 26 April 1995 under the number 184504 in respect of goods and services in Classes 9 and 35;

–        the Czech figurative mark reproduced below, which was filed on 21 December 1993 and registered on 26 April 1995 under the number 184506 in respect of goods and services in Classes 9 and 35;

6        The grounds relied on in support of the opposition were those set out in Article 8(5) of Regulation No 207/2009.

7        By decision of 13 November 2013, the Opposition Division partially upheld the opposition, in respect of the ‘repair and installation services’ and ‘repair information’ in Class 37 covered by the mark applied for. It found, inter alia, that, taken as a whole, the evidence provided by the applicant established that earlier marks Nos 289840 and 267669 enjoyed some degree of reputation in respect of the services in Classes 37 and 42. According to the Opposition Division, although most of the evidence referred to the applicant’s company and the invoices in Czech did not provide any information on the actual services carried out, the evidence could be regarded as referring to the earlier marks in respect of the abovementioned services. In that regard, it stated that, so far as those services were concerned, no clear line could be drawn between the use of a word as a company name and its use as a trade mark and it pointed out that the earlier marks were shown on a substantial proportion of the evidence.

8        On 9 January 2014, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, submitting that the trade mark application should be rejected in respect of all of the goods and services covered, as described in paragraph 3 above.

9        In its decision of 13 January 2015, the Fifth Board of Appeal of EUIPO, first of all, found that the appeal before it had to be understood as being directed at the Opposition Division’s decision in so far as that decision had rejected the opposition in respect of the goods and services covered by the trade mark application, other than the ‘repair and installation services’ and ‘repair information’ in Class 37. It then dismissed the appeal, taking the view that the opposition, which was based on Article 8(5) of Regulation No 207/2009, was not well founded because the evidence submitted by the applicant had not enabled it to confirm the earlier marks’ reputation. In that regard, it stated, in essence:

–        that the evidence submitted by the applicant referred to six variants of the earlier UNICORN trade marks, which included some descriptive additions, such as ‘more than software’, ‘real software’ or ‘tak se delá software’;

–        that all the evidence provided by the applicant related to ‘the word marks or the combined word and unicorn device marks’ and that earlier mark No 184504, representing a unicorn, ‘[wa]s not used on its own’;

–        that the overwhelming majority of the evidence was in Czech, without any translation, even though certain documents were available in the language of the proceedings;

–        that EUIPO and the Boards of Appeal were required to examine the evidence submitted by the parties, but were in no way obliged to carry out additional research;

–        that, since the invoices had been submitted in Czech, no conclusions as regards their subject matter could be drawn from most of them;

–        that the press articles, which had been submitted in Czech, related to interviews with the applicant’s company head and that only one of them referred prominently to the company’s activity, from which article no conclusion could be drawn about the reputation of the earlier marks;

–        that the documents in English all referred to IT projects completed by the applicant, but did not, however, show that the earlier marks had a reputation;

–        that it was not clear why certain documents which could have been informative as regards the company’s position on the market and shown the awareness of the earlier marks had not been even partially translated;

–        that evidence of advertising campaigns, such as the regular appearance of offers of the company’s services in journals and magazines or on billboards or proof of any advertising in the media, ‘[could not] be found’, that the applicant had not provided any evidence of expenditure connected with that advertising and that only two extracts from magazines, both of which were aimed at a narrow segment of a specialist public, referred to the applicant’s services, which was insufficient;

–        that the documents relating to the company’s size did not prove that the earlier marks had a reputation with regard to the goods or services covered by them;

–        that the evidence, as a whole, despite having been submitted in Czech, showed that the applicant was successfully performing as a business software developer and provider, that it had built up a certain goodwill, but only amongst its clients, which were very well-known large companies in Europe, and that its IT services were probably reputed within the relatively narrow circle of business customers, but were not reputed with regard to the general public;

–        that the applicant had also failed to establish that the earlier marks had a reputation on the basis of any documents mentioning the market share held by those marks or of independent third party declarations attesting to the well-known character of the marks instead of the financial success of the company or its owner;

–        that it could be presumed from the press articles that the applicant’s company name was known to the Czech public, as was apparent from a police report, an email, comments published on the applicant’s blog and an article published on the internet, but that that presumption could not be extended to the general public’s awareness of the earlier marks in respect of the services provided by the applicant.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

11      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      It must be observed that, in support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(5) of Regulation No 207/2009, which consists of two parts alleging (i) that the evidence which it submitted as regards the reputation of the earlier marks was not properly taken into consideration and (ii) that the assessment as to whether the earlier marks have a reputation was incorrect.

 The first part, alleging that the evidence which was submitted with a view to proving that the earlier marks have a reputation was not properly taken into consideration

13      In the context of the first part, the applicant puts forward two complaints. First, it submits that the figurative element of trade mark No 184504 is identical to that of trade mark No 184506 and that trade mark No 184506 is a combination of figurative mark No 184504 and figurative mark No 267669. It maintains that the latter two marks are used separately or together. The applicant adds that two of the five marks invoked are word marks which may be used in a form which differs from that registered, but does not, however, alter the distinctive character of those marks. It submits that, consequently, since the evidence submitted refers to marks the dominant and distinctive element of which is the word element ‘unicorn’, the Board of Appeal could not exclude that evidence from its examination.

14      Secondly, the applicant claims that, pursuant to Rule 22(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), EUIPO could have required it to submit a translation in the language of the proceedings of the documents supplied, which it did not in the present case do, with the result that the applicant deduced from that that EUIPO did not need the translation in order to examine the evidence submitted. The applicant maintains that the Board of Appeal’s dismissal of the appeal on the ground that certain documents had not been translated into the language of the proceedings thus constitutes an infringement of Regulation No 2868/95.

15      EUIPO disputes the applicant’s arguments.

 The first complaint

16      In paragraph 20 of the contested decision, the Board of Appeal first of all found that the evidence provided by the applicant referred to six variants of the earlier UNICORN trade marks, inasmuch as they included some descriptive additions to the word element ‘unicorn’, such as ‘more than software’, ‘real software’ or ‘tak se delá software’. In paragraph 21 of the contested decision, the Board of Appeal then pointed out that the items of evidence provided by the applicant all referred ‘to the word marks or the combined word and unicorn device marks’ and that ‘the unicorn device mark, No [184504], [wa]s not used on its own’.

17      In paragraphs 20 and 21 of the contested decision, the Board of Appeal thus found that the evidence provided by the applicant also referred to variants of the earlier UNICORN trade marks, as described in paragraph 5 above, on account of the presence next to the word element ‘unicorn’ of additional word elements, or did not refer to figurative mark No 184504 as registered.

18      As EUIPO correctly points out, by that finding, the Board of Appeal did not reject the evidence provided by the applicant on the ground that it referred to variants of the earlier UNICORN trade marks or of figurative mark No 184504. The considerations in paragraphs 21 and 22 of the contested decision, which refer to the evidence ‘as a whole’, show, moreover, that the Board of Appeal did not exclude any of the items of evidence provided by the applicant on that ground.

19      The first complaint must therefore be rejected.

 The second complaint

20      The Board of Appeal pointed out, in paragraph 21 of the contested decision, that the overwhelming majority of the evidence provided by the applicant was in Czech, without any translation in the language of the proceedings, and that EUIPO and the Boards of Appeal were required to examine only the evidence submitted by the parties, but were not obliged to carry out additional research. It added, first, that, since the invoices were all in Czech, it could not draw any conclusions from the content of most of them and, secondly, that it was not clear why certain important documents which could have been informative as regards the applicant’s position on the market and the awareness of the earlier marks had not been even partially translated.

21      Even though the general statement in paragraph 22 of the contested decision could be taken to mean that, as to the substance, the Board of Appeal took account, in that decision, of the ‘evidence, as a whole, despite being submitted in Czech’, it is clear from paragraphs 21 and 23 of that decision that the Board of Appeal did not, in practice, on the sole ground that a translation in the language of the proceedings had not been provided, take into account some of that evidence. The same is true of most of the invoices, the market survey reports and analyses in respect of the period from 2006 to 2010 and the documents setting out advertising expenditure.

22      It must therefore be ascertained whether the Board of Appeal could disregard those documents on the sole ground that the applicant had not provided a translation of them in the language of the proceedings.

23      In that regard, it is important to point out, first, as EUIPO submits, that Rule 22(6) of Regulation No 2868/95, which is relied on by the applicant and provides that ‘where the evidence supplied by the opposing party is not in the language of the opposition proceedings, [EUIPO] may require the opposing party to submit a translation of that evidence in that language, within a period specified by the Office’, is applicable with regard to proof of use of a trade mark and not to proof of its reputation. The applicant cannot therefore claim that the Board of Appeal infringed Rule 22(6) of Regulation No 2868/95.

24      Next, it must be borne in mind, as EUIPO observed in its written pleadings, that, according to Rule 19(3) of Regulation No 2868/95, the evidence that the mark on which the opposition is based has a reputation, for the purposes of Article 8(5) of Regulation No 207/2009, must be in the language of the proceedings or accompanied by a translation, which must be submitted within the time limit specified for submitting the original document. Furthermore, Rule 19(4) of that regulation provides that EUIPO ‘is not to take into account … documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by [EUIPO]’.

25      The provisions of Rule 19 of Regulation No 2868/95 were drawn to the applicant’s attention by the Opposition Division on 5 December 2012, a fact which the applicant does not dispute.

26      In those circumstances, in the light of the provisions of Rule 19 of Regulation No 2868/95, the applicant cannot criticise EUIPO for not requesting an English translation of documents submitted in Czech or for not taking into account documents submitted in Czech which had not been translated.

27      The applicant cannot, in addition, maintain that, as it had not been asked to translate the documents produced, it thought that EUIPO did not need any translations in order to examine the documents submitted. It was already clear from the Opposition Division’s decision that certain documents which had not been translated into the language of the proceedings had not been examined by the Opposition Division, a fact of which the applicant could not have been unaware.

28      It follows that the second complaint, and therefore also the first part of the single plea, must be rejected.

 The second part, alleging that the assessment as to whether the earlier marks have a reputation was incorrect

29      The applicant submits, first of all, that the Board of Appeal contradicted itself by finding, on the one hand, that the applicant enjoyed a certain recognition in the IT field and, on the other hand, that the documents which it had provided did not demonstrate recognition of the earlier marks on the market.

30      According to the applicant, the Board of Appeal erred in finding, given that the applicant’s company name and the word element of the earlier marks is identical, that the reputation of the company had to be distinguished from that of the earlier marks belonging to the applicant. It submits that, in the present case, it is difficult to determine whether the reputation relates to the applicant or to the earlier marks.

31      Next, the applicant criticises the Board of Appeal’s interpretation, in paragraph 26 of the contested decision, of a police report, according to which interpretation the statements of a police official show that the applicant has a reputation but not that the earlier marks have a reputation with regard to the goods and services covered by those marks. According to the applicant, the police official knew that the applicant was active in a number of sectors and therefore made a link between the applicant and the vehicle service stations (refuelling and maintenance) that are, however, covered by the mark applied for, which, in the applicant’s view, shows real confusion of the marks at issue on the part of the consumer.

32      Lastly, the applicant submits that the evidence which it submitted proves that the earlier marks have a reputation in the territory of the Czech Republic, at least as regards some of the services covered by those marks. According to the applicant, that evidence indicates that the earlier marks have been used for a substantial period of time and that, having regard to the sales figures and what is shown by the press articles, they have a ‘consolidated position in the market’.

33      EUIPO disputes the applicant’s arguments.

34      As a preliminary point, it should be borne in mind that, 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 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’.

35      It is apparent from the wording of 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 (see, to that effect, judgments of 25 May 2005, Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS), T‑67/04, EU:T:2005:179, paragraph 30; of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34, and of 29 March 2012, You-Q v OHIM — Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 25).

36      Assessing whether the earlier trade mark or marks has or have a reputation is therefore an essential step in examining whether Article 8(5) of Regulation No 207/2009 is applicable.

37      In that regard, it must be pointed out that Article 8(5) of Regulation No 207/2009 does not define ‘reputation’. However, it is clear from the case-law that, in order to satisfy the requirement of reputation, the earlier trade mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark (see, to that effect, judgments of 6 February 2007, Aktieselskabet af 21. november 2001 v OHIM — TDK Kabushiki Kaisha (TDK), T‑477/04, EU:T:2007:35, paragraph 48, and of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling), T‑627/13, not published, EU:T:2015:740, paragraph 74).

38      In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it, but it is not required for that mark to be known by a specific percentage of the relevant public or for its reputation to extend throughout the territory concerned, so long as the reputation exists in a substantial part of that territory (see, to that effect, judgments of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraphs 25 to 29; of 19 June 2008, Mülhens v OHIM — Spa Monopole (MINERAL SPA), T‑93/06, not published, EU:T:2008:215, paragraph 33; of 27 September 2012, El Corte Inglés v OHIM — Pucci International (Emidio Tucci), T‑373/09, not published, EU:T:2012:500, paragraph 58, and of 2 October 2015, Darjeeling, T‑627/13, not published, EU:T:2015:740, paragraph 75).

39      In view of the documents which the applicant provided for the purpose of proving that the earlier marks have a reputation, it must be held, as the Board of Appeal correctly found, that it is not established that, for the relevant public, those marks have a reputation for the goods and services which they cover.

40      First, it must be pointed out that the earlier marks were registered in the Czech Republic and it must therefore be held that the relevant territory is that of that State, a point which the parties do not dispute.

41      Secondly, it is important to point out, as the Opposition Division correctly stated, that the evidence provided by the applicant with a view to proving that the earlier marks have a reputation does not relate to all the goods and services covered by those marks. As is apparent from the Opposition Division’s decision, the evidence mainly relates to the services in Classes 37 and 42 covered by earlier trade marks No 289840 and No 267669.

42      That finding was neither invalidated by the Board of Appeal, nor has it been disputed by the applicant. On the contrary, it is apparent from the application that the applicant itself acknowledges that the earlier marks have a reputation in the territory of the Czech Republic ‘at least for some of the services’ covered by the earlier marks.

43      It is true that, in paragraph 25 of the application, the applicant states that the earlier marks also have a reputation for goods and services other than only ‘software’, ‘computer programming’ and ‘installation and service works in computer software sphere’, but it does not, however, substantiate that statement by referring specifically to the evidence which it has provided or by putting forward arguments that are capable of invalidating the Opposition Division’s assessment (see paragraph 41 above), an assessment which was not contradicted by the Board of Appeal.

44      Consequently, it must be held that the evidence of the earlier marks’ reputation provided by the applicant mainly concerns the services in Classes 37 and 42.

45      Thirdly, it must be borne in mind that whether a trade mark has a reputation must be assessed in relation to the public concerned by the goods or services covered by that mark (see, to that effect, judgments of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 24, and of 2 October 2015, Darjeeling, T‑627/13, not published, EU:T:2015:740, paragraph 70).

46      As has been stated in paragraphs 41 to 44 above, given that the evidence which the applicant adduced with a view to proving that the earlier marks have a reputation mainly relates to the services in Classes 37 and 42, it is necessary to uphold the finding of the Opposition Division and the Board of Appeal that the relevant public with regard to those services consisted of business customers seeking information and communication technology solutions.

47      It is true that, as the applicant submits, as regards software which is used by millions of Czech users, whether the earlier marks have a reputation has to be assessed with regard to the general public. However, as has been shown in paragraphs 41 to 44 above, the evidence which the applicant provided with a view to proving that the earlier marks have a reputation does not concern the ‘all kinds of software’, ‘computer programs/software’ and other goods, which are in Class 9. Moreover, in the application, the applicant does not make any reference to evidence which it may have adduced as regards those goods.

48      It follows that whether the earlier marks have a reputation for the services in Classes 37 and 42, to which the evidence provided by the applicant mainly relates, must be assessed with regard to a public of professionals.

49      Fourthly, as the Opposition Division expressly pointed out, an observation which was not contradicted by the Board of Appeal, it is apparent from the evidence submitted by the applicant that the earlier marks are shown on a substantial proportion of that evidence, which thus shows that they are used by the applicant in the territory of the Czech Republic. However, the fact that the earlier marks are shown on a substantial proportion of that evidence is not in itself sufficient to conclude that the earlier marks have a reputation for the goods and services which they cover.

50      Fifthly, in that regard, as the Board of Appeal stated in paragraph 24 of the contested decision, the applicant did not provide any documents mentioning the market share held by the earlier marks, a point which the applicant does not dispute in its application, as it merely states, without referring to any document, that ‘the sales figures … suggest that the [earlier] trade marks have a consolidated position in the market’. In this connection, it must be added that, whilst the body of the application may be supported by references to specific passages in documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the fact that the essential arguments are not set out in the application, and it is not for the Court to place itself in the parties’ position and seek the relevant information in the annexes (see, to that effect, judgments of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 14, and of 29 February 2012, Certmedica International and Lehning entreprise v OHIM — Lehning entreprise and Certmedica International (L112), T‑77/10 and T‑78/10, not published, EU:T:2012:95, paragraph 28).

51      Sixthly, the Board of Appeal also observed that evidence of advertising campaigns, such as the regular appearance of offers of the applicant’s services in journals and magazines or on billboards or proof of any advertising in the media, ‘could [not] be found’ and that the applicant had not provided any concrete expenditure concerning advertising. The Board of Appeal added that there were only two items of evidence of promotional activities in two different magazines aimed at a specialist public, which is in itself insufficient, as the Board of Appeal correctly found.

52      It must be stated in that regard that, in the application, the applicant merely states that it had mounted a ‘massive advertisement campaign’, which had been ‘documented in the opposition proceedings’, but does not provide any details in that regard. However, as has been stated in paragraph 50 above, a general reference to other documents cannot make up for the fact that the essential arguments are not set out in the application as the Court does not have to place itself in the parties’ position and seek the relevant information in the annexes.

53      Seventhly, the Board of Appeal also found that there were no independent third party declarations attesting to the well-known character of the earlier marks, a point which is not refuted by the applicant.

54      In the light of all the considerations set out in paragraphs 40 to 53 above, it must be held that the Board of Appeal was right in finding that the applicant had not adduced evidence which established that the earlier marks had a reputation, in the territory of the Czech Republic, in respect of the goods and services which they covered.

55      That conclusion cannot be invalidated by the applicant’s argument that, where the company name is identical to the word sign of the earlier marks, there is no need to distinguish the reputation of the company from that of the marks used by that company because there is a clear link between those two reputations.

56      It is indeed true, as is stated in paragraphs 21 and 22 of the contested decision, that it is apparent from a number of documents submitted by the applicant that it is a company which is known and has a ‘certain goodwill’ in the Czech Republic and in Europe in the IT field. However, the recognition of the applicant in the Czech Republic cannot make up for the insufficiency of the evidence which the applicant submitted with a view to proving that the earlier marks have a reputation as regards the goods and services which they cover.

57      As is apparent from paragraphs 37 and 38 above, in order to establish that a trade mark has a reputation, it must be proved that that mark is known to a significant part of the public concerned by the goods or services covered by that trade mark. Consequently, even if the name of a company is known, that recognition is not capable of establishing that the mark of which it is the proprietor, even if it is a ‘house mark’ which is identical to the name of the company, is known to a significant part of the public in respect of the goods and services which it covers.

58      In addition, in the light of the foregoing considerations, it must be held that the police report, which the applicant provided as an annex to the opposition, assuming that it is relevant, would not on its own be sufficient to establish that the earlier marks have a reputation.

59      It follows from all of the foregoing that the second part of the single plea must be rejected and that the action must therefore be dismissed in its entirety.

 Costs

60      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Unicorn a.s. to pay the costs.

Delivered in open court in Luxembourg on 28 October 2016.

[Signatures]

* Language of the case: English.

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