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

JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

30 September 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative trade mark Silvania Food — Earlier EU word marks SYLVANIA — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Article 8(5) of Regulation No 207/2009)

In Case T‑430/15,

Flowil International Lighting (Holding) BV, established in Amsterdam (Netherlands), represented by J. Güell Serra, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

defendant,

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

SC Lorimod Prod Com, Srl, established in Simleul Silvaniei (Romania),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 May 2015 (Case R 616/2014-2), concerning opposition proceedings between Flowil International Lighting (Holding) and SC Lorimod Prod Com,

THE GENERAL COURT (Seventh Chamber),

composed, at the time of deliberation, of M. van der Woude, President, I. Ulloa Rubio (Rapporteur) and A. Marcoulli, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 31 July 2015,

having regard to the response lodged at the Court Registry on 15 October 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 September 2012, SC Lorimod Prod Com, Srl 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        The mark in respect of which registration was sought is the following figurative sign:

3        The goods and services in respect of which registration was sought are in Classes 29, 30 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond for each of those classes — after the restriction made in the proceedings before EUIPO — to the following description:

–        Class 29: ‘Meat, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats’;

–        Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice’;

–        Class 35: ‘Advertising’; business management; business administration; office functions’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 2012/194 of 10 October 2012.

5        On 10 January 2013, the applicant, Flowil International Lighting (Holding) BV, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6        The opposition was based on the following earlier rights:

–        EU word mark SYLVANIA filed on 5 June 2004 and registered on 30 August 2004 under No 3220241, covering goods in Classes 9, 10 and 11 and corresponding, for each of those classes, to the following descriptions:

–        Class 9: ‘Starters for electric lamps; electronic starters for fluorescent lamps; ballasts for lamps and lighting fittings; electrical transformers for use with lighting; lighting transformers; UV photocells; parts and fittings for the aforesaid goods’;

–        Class 10: ‘Lights and lamps for curative, medical, surgical and therapeutical purposes; parts and fittings for the aforesaid goods’;

–        Class 11: ‘Apparatus and installations for lighting; fluorescent light tubes; light bulbs; lamps; filaments for lamps; arc lamps; electric discharge tubes for lighting; lamp casings; lamp glasses, lamp hanging supports, lamp reflectors, lampshades; luminous tubes for lighting; sockets for electric lights; torches; search lights; lights and lamps for cosmetic purposes; parts and fittings for the aforesaid goods’;

–        EU word mark SYLVANIA filed on 5 June 2003 and registered on 30 August 2004 under No 3220274, covering goods in Classes 9 and 11 and corresponding, for each of those classes, to the following description:

–        Class 9: ‘Computer and television monitors; parts and fittings for the aforesaid goods’;

–        Class 11: ‘Lamps and light bulbs for directional signals for automobiles; lighting apparatus and installations for vehicles; vehicle headlights; vehicle reflectors; parts and fittings for the aforesaid goods’;

–        EU word mark SYLVANIA filed on 13 July 2005 and registered on 17 May 2006 under No 4548831, covering goods and services in Class 42 and corresponding to the following description: ‘Design services and consultation services, all relating to lighting and lighting technology; providing planning and simulation programs for lighting applications, including via the internet’;

–        EU word mark SYLVANIA filed on 5 January 2007 and registered on 26 November 2007 under No 5636071, covering goods in Classes 9 and 11, corresponding, for each of those classes, to the following description:

–        Class 9: ‘Starters for electric lamps, electronic starters for fluorescent lamps, ballasts for lamps and lighting fittings, electrical transformers for use with lighting, lighting transformers, UV photocells; computer software, computer discs and CD ROMs featuring information relating to lighting, lighting products, lighting design and lighting technology; radio transmitting and radio receiving apparatus; televisions transmitting and television receiving apparatus; sound recording, sound transmitting and sound reproducing apparatus; computers; computer and video monitors; computer-based control apparatus; combinations of two or more of any of the aforesaid goods; voltage surge protectors; light meters; electro-mechanical and electronic temperature and-or timer controls; controllers for heating, ventilating and/or cooling systems; thermostats, clock thermostats, programmable thermostats, programmers, timers, comfort controls, temperature sensors, thermostatic radiator valves; wiring boxes and connectors for any of the above; transformers; electrical and electronic instruments and apparatus, all for testing, measuring, recording, analysing or control; switchgear, circuit breakers; electric circuit components, relays, reactors, thermistors and rectifiers; component parts for all the aforesaid goods’;

–        Class 11: ‘Apparatus and installations for lighting; contact tracks for lighting; lighting tracks; luminaires; fluorescent light tubes; light bulbs; lamps; filaments for lamps; arc lamps; electric discharge tubes for lighting; lamp casings; lamp glasses, lamp hanging supports, lamp reflectors, lamp shades; luminous tubes for lighting; sockets for electric lights; torches; search lights; lights and lamps for cosmetic purposes; apparatus and lamps for tanning purposes; apparatus for heating, steam generating, cooking, refrigerating, drying and ventilating; radiation apparatus for cosmetic and technical purposes; heating, ventilating and/or cooling systems, apparatus and installations; room heaters, vaporizers, air cleaners and humidifiers; installations and apparatus, all for air conditioning, humidifying and de-humidifying; filters being parts of or for use with the aforesaid air-conditioning installations or apparatus; fire hydrants, fire vents being parts of the aforesaid air-conditioning installations or apparatus; ceiling, table, pedestal and wall fans; apparatus and installations for water supply, bathing and sanitary purposes; ceiling, table, pedestal and wall fans; components parts for all the aforesaid goods’;

–        EU word mark SYLVANIA filed on 12 January 2007 and registered on 26 November 2007 under No 5648019, covering goods in Class 7 and corresponding to the following description: ‘Machines and parts of machines for the lighting industry; machines for the manufacture of electric lamps and of electric lighting apparatus; machines for the mechanical handling and working of glass; machines and machine tools; motors and engines (except for land vehicles); starters and fans for motors and engines; industrial control apparatus for machines, engines or motors; machine coupling and transmission components (except for land vehicles); electric generators and electric motors; pumps, motors, engines and hydraulic or pneumatic control devices for equipment and apparatus for heating, refrigerating, drying, ventilating, air-conditioning and water supply apparatus; parts for all the aforesaid goods’;

–        non-registered word mark SYLVANIA used in the course of trade in all Member States to designate the following goods and services: ‘Electrical and electronic instruments and apparatus; starters, ballasts and transformers for use with lamps and lighting apparatus; lights and lamps for curative, medical, surgical and therapeutic purposes; apparatus and installations for lighting; lamps; bulbs; parts and fittings for the aforesaid goods; design and consultation services relating to lighting and lighting technology; providing planning and simulation programmes for lighting applications’;

–        word mark SYLVANIA in Benelux, Estonia, the Czech Republic, Denmark, Poland, Hungary, the United Kingdom, Cyprus, Italy, Bulgaria, Spain, France, Slovakia, Austria, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden and Ireland for the purpose of Article 6 bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009, Article 8(2)(c) of Regulation No 207/2009 read in conjunction with Article 8(1)(b) of that regulation, Article 8(4) of Regulation No 207/2009 and Article 8(5) of Regulation No 207/2009.

8        On 23 December 2013, the Opposition Division rejected the opposition.

9        On 21 February 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10      By decision of 8 May 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. The Board found that there was no likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009. It considered that, while the signs at issue were similar overall, the goods and services in question were different, in view in particular of the differences in the nature, purpose and intended use of those goods and services, and rejected the suggestion that the goods and service were in competition with each other or complementary. The Board of Appeal also rejected the opposition based on Article 8(5) of Regulation No 207/2009. In that regard, it found that, as the applicant had failed to establish that there was a link between the mark applied for and the earlier rights relied on in support of the opposition, one of the requirements laid down in Article 8(5) of Regulation No 207/2009 was not fulfilled, which was sufficient to dismiss the applicant’s claims based on that provision.

 Forms of order sought by the parties

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 application;

–        order the applicant to pay the costs.

 Law

13      The applicant relies on two pleas in law in support of its action, alleging (i) infringement of Article 8(1)(b) of Regulation No 207/2009 and (ii) infringement of Article 8(5) of Regulation No 207/2009.

 The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

14      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an 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.

15      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

 The relevant public

16      As the earlier rights on which the opposition is based consist of trade marks for which protection is claimed within the European Union, the territory with regard to which the likelihood of confusion must be assessed is that of the European Union, as stated by the Board of Appeal in the contested decision, without being challenged by the applicant on that point.

17      The Board of Appeal considered, correctly, without being challenged in that regard by the applicant, that the relevant public for the goods in Classes 29 and 30 covered by the mark applied for is the average consumer with a normal level of attention and that the relevant public for the services in Class 35 covered by the mark applied for is a public consisting of professionals with an above average level of attention.

18      With regard to the goods and services in Classes 7, 9, 10, 11 and 42 covered by the earlier marks, it should be noted, as the Board of Appeal was correct to find, without being challenged by the applicant, that those are goods and services intended not only for the average consumer but also for professionals.

19      As regards the relevant public’s level of attention, it is settled case-law that where consumers consist of both the general public and professionals, it is necessary to take account of the section of the public with the lowest level of attention (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21 and the case-law cited; see also, to that effect, judgment of 15 February 2011, Yorma’s v OHIM — Norma Lebensmittelfilialbetrieb (YORMA’S), T‑213/09, not published, EU:T:2011:37, paragraph 25). It follows that, in the present case, with regard to the goods and services in Classes 7, 9, 10, 11 and 42 covered by the earlier marks and intended for both the average consumer and professionals, it is necessary to take account of the level of attention of the consumer who is a member of the general public.

 Comparison of the goods and services at issue

20      According to settled case-law, in assessing the similarity of the goods or services at issue, 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 and 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 judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

21      The applicant claims, essentially, that the Board of Appeal was incorrect to find there was no similarity between the goods and services covered by the marks at issue. The applicant considers that the foodstuffs in Classes 29 and 30 covered by the mark applied for are complementary to the cooking appliances in Class 11 covered by the earlier EU word mark SYLVANIA registered under No 563607 and to the lamps covered by the earlier marks, in so far as cooking appliances and lamps are intended to be used with foodstuffs in order to transform or preserve them or to keep them hot. Similarly, the applicant considers that the lighting apparatus covered by the earlier marks and the food and drink items in Classes 29 and 30 covered by the mark applied for are similar, as all those goods may be bought in supermarkets and the relevant public may associate the goods in question with the same commercial origin. Moreover, the applicant contends that the services in Class 35 covered by the mark applied for include services provided in connection with an infinite variety of goods and may therefore relate to the goods covered by the earlier marks. Lastly, the applicant is of the view that there are obvious links between the services in Class 35 covered by the mark applied for and the service in Class 42 covered by the earlier EU word mark SYLVANIA registered under No 4548831.

22      EUIPO disputes the applicant’s arguments.

23      With regard to the foodstuffs covered by the mark applied for in Classes 29 and 30, it should be noted that, as the Board of Appeal was correct to observe, they are different from the goods and services in Classes 7, 9, 10, 11 and 42 covered by the earlier marks. First of all, those goods and services do not have in common their nature, purpose or intended use. The goods in Classes 29 and 30 covered by the mark applied for are consumed to satisfy hunger and quench thirst or to satisfy a desire to eat or drink — purposes which are very different from those of machines, motors and engines, lighting apparatus, air supply apparatus, sanitary fixtures and other equipment of a similar nature, as well as those of lighting-related design and planning services. Next, it has not been established that the goods and services in question are in competition with each other or complementary. In that regard, it is settled case-law that goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). There is no evidence to suggest that such a connection exists in the present case. It is clear that the purchase of the foodstuffs covered by the mark applied for is not conditional on the purchase of the lighting goods or the lighting-related design and planning services covered by the earlier marks and there is nothing to support the conclusion that the purchaser of those goods or services would be prompted to buy the others. Moreover, those goods and services are made by different manufacturers.

24      As regards any complementarity that may derive from the fact that the cooking appliances and heat lamps covered by the earlier marks may be important for the consumption of certain specific foodstuffs, it should be observed that, even though cooking appliances may be used for the consumption of certain foodstuffs, they are neither essential nor important for the use of foodstuffs, as the latter may also be consumed without using cooking appliances and can be heated or cooked using other means and equipment. The fact that they may be used together does not mean that they must be used together. Therefore, there is no relationship of complementarity between those goods and services.

25      With regard to the services in Class 35 covered by the mark applied for, the same considerations apply as those set out in paragraph 23 above. The nature, purpose, intended use and distribution channels of those services are different from those of the goods and services in Classes 7, 9, 10, 11 and 42 covered by the earlier marks; they are not in competition with those goods and services or complementary to them and are not intended for the same consumers. The fact that the ‘advertising, business management, business administration and office functions’ services in Class 35 covered by the mark applied for may be provided, inter alia, for the purpose of promoting, advertising, managing or administering undertakings which manufacture the applicant’s goods, such as lighting apparatus, does not mean there is necessarily a link between those services, because the services in Class 35 covered by the mark applied for may be provided for a vast range of goods of very different kinds. Moreover, it should be noted that the advertising and management services in Class 35 covered by the mark applied for are different in nature from lighting-related design and consultation services.

26      Lastly, with regard to the applicant’s argument that the goods and services at issue are similar because, inter alia, they are sold in the same commercial establishments cannot succeed. Indeed, it should be recalled that no particular importance attaches to the fact that goods may be sold in the same commercial establishments, such as department stores or supermarkets, because goods of a very different nature may be found in such retail outlets and consumers do not automatically assume that they are from the same source (see, to that effect, judgment of 26 October 2011, Intermark v OHMI — Natex International (NATY’S), T‑72/10, not published, EU:T:2011:635, paragraph 37 and the case-law cited). Moreover, it should be noted that the goods at issue are found in different departments in department stores and supermarkets.

27      It follows from the foregoing that the Board of Appeal was right to conclude that the goods and services at issue are different.

 Comparison of the signs

28      In the present case, the Board of Appeal was correct to find that the signs at issue are similar overall, a finding that was not contested by the parties.

 The likelihood of confusion

29      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

30      As the goods and service at issue are different, one of the cumulative conditions necessary for a finding that there is a likelihood of confusion is not met. Accordingly, it must be concluded that the Board of Appeal did not err in finding 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.

31      It follows from the foregoing that the first plea in law must be rejected.

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

32      The applicant claims that, in view of the fact that the earlier marks on which it bases the opposition enjoy a reputation, the mark applied for may take unfair advantage of the distinctive character or the repute of those marks and should not therefore be registered, in accordance with Article 8(5) of Regulation No 207/2009.

33      EUIPO disputes the applicant’s arguments.

34      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 [EU] trade mark, the trade mark has a reputation in the [European 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 three conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be 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, judgment of 25 May 2005, Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA FINDERS), T‑67/04, EU:T:2005:179, paragraph 30).

36      In addition, Article 8(5) of Regulation No 207/2009 implies that the three types of injury referred to therein, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, it establishes a link between them even though it does not confuse them (see judgment of 14 December 2012, Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), T‑357/11, not published, EU:T:2012:696, paragraph 29 and the case-law cited). The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see judgments of 25 May 2005, SPA-FINDERS, paragraph 41 and the case-law cited, and 11 December 2014, Coca-Cola v OHIM — Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited).

37      It is in the light of the principles established by the case-law cited above that the second plea in law must be examined.

 The similarity of the signs at issue

38      In the present case, as established in paragraph 28 above, the signs at issue are similar overall.

 The reputation of the earlier marks

39      It is common ground that the earlier EU word mark SYLVANIA registered under No 3220241 has established a reputation for the goods in Classes 9, 10 and 11 designated by that mark and that the earlier EU work mark SYLVANIA registered under No 5636071 has also established a reputation for part of the goods in Classes 9, 10 and 11 designated by that mark.

40      On the other hand, the contested decision expressly stated that the applicant had failed to put forward any evidence to establish the reputation of the earlier marks relied on in support of the opposition, which is not disputed by the applicant.

41      Accordingly, for the purposes of the application of Article 8(5) of Regulation No 207/2009 in the present case, it is necessary to take into account only the reputation of the earlier EU word mark SYLVANIA registered under No 3220241 designating goods in Classes 9, 10 and 11, and the reputation of the earlier EU word mark SYLVANIA registered under No 5636071 for part of the goods in Classes 9 and 11 designated by that mark, namely ‘starters for electric lamps, electronic starters for fluorescent lamps; ballasts for lamps and lighting fittings; component parts for all the aforesaid goods’ and ‘apparatus and installations for lighting; contact tracks for lighting; lighting tracks; luminaires; fluorescent light tubes; light bulbs; filaments for lamps; arc lamps; electric discharge tubes for lighting; lamp casings; lamp shades; luminous tubes for lighting; sockets for electric lights; search lights; lights and lamps for cosmetic purposes; apparatus and lamps for tanning purposes; components parts for all the aforesaid goods’.

 Whether there is a link in the mind of the relevant public

42      According to case-law, the question whether there is a link between the mark applied for and the earlier mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include: the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26; judgment of 6 July 2012, Jackson International v OHIM — Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published. EU:T:2012:348, paragraph 21; see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42).

43      In the absence of such an association on the part of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 31).

44      In the present case, the Board of Appeal assessed the likelihood of the occurrence of one of the three types of injury referred to in Article 8(5) of Regulation No 207/2009, having regard in particular to whether there is a link between the marks at issue. It stated, with regard both to the likelihood of an unfair advantage being taken of the distinctive character or the repute of the earlier mark and to the likelihood of detriment being caused to the earlier mark, that the possibility that the public might establish any kind of mental connection between the goods and services in question covered by the mark applied for in Classes 29, 30 and 35 on the one hand, and the well-known products designated by the earlier marks in Classes 9, 10 and 11 on the other, had not been established.

45      Consequently, it is necessary, first of all, to examine whether there is a possibility that the relevant public will establish such a link and then, only if such a link is found to exist, to ascertain whether the applicant has demonstrated that one of the risks referred to in Article 8(5) of Regulation No 207/2009 is present in this case.

46      In the first place, it should be observed, as noted in paragraphs 23 to 27 above, that the goods and services covered by the mark applied for differ as regards their nature, purpose and intended use from the goods for which the earlier marks have established a reputation and are neither in competition with or complementary to those goods. In this case, as the Board of Appeal rightly stated, in view of the differences established between those goods and services, it is unlikely that the relevant public will expect there to be any kind of relation whatsoever between the goods and services covered by the mark applied for and the goods for which the earlier marks have established a reputation. Given that those goods and services are of a very different nature, it is unlikely that the quality image associated with the goods for which it has been established that the earlier marks have a reputation might be transferred to the foodstuffs or food industry services covered by the earlier marks.

47      Furthermore, it should be noted that the Board of Appeal points out that the applicant does not state how the relevant public would be able to establish any kind of link between the goods and services covered by the mark applied for in Classes 29, 30 and 35 and the goods for which the earlier marks have a reputation.

48      In the second place, the Board of Appeal stated that it could not be concluded from the evidence that the earlier marks had a particularly strong reputation. It also observed that their reputation had been established only in respect of lighting products, such as light bulbs and lamps, whereas the goods and services covered by the mark applied for related to edible products, advertising, business management and business administration.

49      In circumstances such as those of the present case, it may be concluded that the lack of any similarity between the goods and services at issue and the fact that the earlier marks do not have a strong reputation make it possible to rule out any link between the marks at issue.

50      Accordingly, as is clear from the case-law cited in paragraph 43 above, given that the existence of a link between the marks at issue is a necessary, but not sufficient, requirement for the purpose of satisfying the third condition laid down by Article 8(5) of Regulation No 207/2009, there is, in the absence of such a link, no need to examine whether one of the three types of risk referred to in Article 8(5) of Regulation No 207/2009 is present.

51      It follows from the foregoing that the third conditions laid down in Article 8(5) of Regulation No 207/2009 is not satisfied in the present case, there being no link between the marks at issue.

52      The second plea must therefore be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

53      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 (Seventh Chamber)

hereby:

1.      Dismisses the action.

2.      Orders Flowil International Lighting (Holding) BV to pay the costs.

Delivered in open court in Luxembourg on 30 September 2016.

[Signatures]

* Language of the case: English.

© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.