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

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

16 December 2020 (*)

(EU trade mark – Invalidity proceedings – EU word mark JCE HOTTINGUER – Non-registered earlier national trade mark HOTTINGER – Relative ground for refusal – Reference to the national law governing the earlier mark – Rules governing common law actions for passing-off – Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009 (now Article 8(4) and Article 60(1)(c) of Regulation (EU) 2017/1001, respectively))

In Case T‑535/19,

H.R. Participations SA, established in Luxembourg (Luxembourg), represented by P. Wilhelm, J. Rossi, E. Dumur and G. Hadot-Pericard, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and V. Ruzek, acting as Agents,

defendant,

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

Hottinger Investment Management Ltd, established in London (United Kingdom), represented by W. Sander, Solicitor, and M. Beebe, Barrister,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 May 2019 (Case R 2078/2018-2), relating to invalidity proceedings between Hottinger Investment Management and H.R. Participations,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, J. Schwarcz and R. Norkus (Rapporteur), Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 30 July 2019,

having regard to the response of EUIPO lodged at the Court Registry on 17 December 2019,

having regard to the response of the intervener lodged at the Court Registry on 5 December 2019,

further to the hearing on 15 October 2020,

gives the following

Judgment

I.      Background to the dispute

1        On 1 July 2011, Elenberg SA, the predecessor in law to the applicant, H.R. Participations SA, 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the word sign JCE HOTTINGUER.

3        The services in respect of which registration was applied for are in Classes 35 and 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 and correspond, for each of those classes, to the following description:

–        Class 35: ‘Advertising; Publication of publicity texts; Business management; Business administration; Office functions; Business management and organisation consultancy; Efficiency experts; Market research services; Information, business investigations and research; Business appraisals; Economic forecasting; Cost-price analysis; Drawing up of statistics; Drawing up of accounts; Updating of advertising material; Collection and systematic ordering of data in a central file; Computerized file management; Bookkeeping; Administrative management of investment companies, investment funds, insurance companies and insurance and investment funds; Administrative management of companies (for others), administrative management of investment funds (for others); Data searches in computerised files for others; Projects (business management assistance); Administrative company payment services; Tax preparation’;

–        Class 36: ‘Banking business; Insurance; Financial affairs; Monetary affairs; Real estate affairs; Consultancy and information relating to banking and insurance; Investment consultancy and information, in particular financial investment; Financial transactions; Banking; Money dealings; Loans (financing); Lending against securities; Mortgage banking; Hire-purchase; Electronic funds transfer; Financial sponsorship; Direct banking (home-banking); Credit and debit card services; Issuance of credit and debit cards; Exchanging money; Financial clearing; Cheque verification; Issuing of travellers' cheques; Analysis (financial- ); Financial evaluation (insurance, banking, real estate); Savings; Investment funds services; Mutual funds; Capital investments; Establishment of funds; Fund investment; Pension funds; Pension funds; Savings banks; Financial management of assets and capital; Financial management; Financing services; Credit bureaux; Surety services; Real estate appraisal; Brokerage; Stock exchange quotations; Securities brokerage; Insurance brokerage; Real estate brokers; Deposits of valuables; Safe deposit services; Issuing of tokens of value; Instalment loans; Fiscal valuations and assessments; Trustee services; Financial services relating to company payment; Debt recovery services; Charitable collections; Fire insurance; Medical insurance; Life insurance underwriting; Insurance for physical and legal persons and for property’.

4        The applicant claimed a priority in relation to its Benelux trade mark application No 1 217 280, the filing date of which was 10 January 2011.

5        On 20 September 2011, the application was published in the Community Trade Marks Bulletin and the trade mark was registered on 15 August 2014.

6        On 5 December 2016, the intervener, Hottinger Investment Management Ltd, filed an application for a declaration of invalidity of the contested mark for all the registered services. The grounds of the application for a declaration of invalidity were those referred to in Article 53(1)(c), read in conjunction with Article 8(4) of Regulation No 207/2009 (now Article 60(1)(c) and Article 8(4) of Regulation 2017/1001, respectively).

7        The application for a declaration of invalidity was based on the non-registered earlier national trade mark HOTTINGER used in the course of trade of more than mere local significance in the United Kingdom for ‘financial services; financial advice; wealth management; administration of accounts; financial planning; investment management and wealth advisory services; capital management; raising of capital; corporate advisory and concierge services; advisory and consultancy services relating to all the aforementioned’.

8        The intervener stated that it used the non-registered earlier national trade mark as the dominant element of its registered name and its trading name in the United Kingdom at least since 21 October 1987. It invoked the law of passing-off.

9        By decision of 28 August 2018, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found, in essence, that the intervener had not proved that the non-registered earlier national trade mark had been used in the course of trade before and on the filing date of the application for a declaration of invalidity.

10      On 25 October 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision. It also attached additional evidence to its appeal.

11      By decision of 3 May 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO partially annulled the Cancellation Division’s decision and declared the trade mark invalid for all the contested services, with the exception of ‘advertising; publication of publicity texts; updating of advertising material’ in Class 35.

12      As regards the procedural irregularities of the application for a declaration of invalidity raised by the applicant, the Board of Appeal held that it was sufficiently precise and clear from the application for a declaration of invalidity that that application was based on Article 53(1)(c), read in conjunction with Article 8(4) of Regulation No 207/2009, and that protection under the law of passing-off was being claimed for the non-registered earlier national trade mark.

13      So far as concerns the evidence adduced by the intervener for the first time before the Board of Appeal, the latter decided to consider it admissible since it met the requirements of Article 27(4)(a) and (b) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/40 (OJ 2018 L 104, p. 1).

14      As regards Article 53(1)(c), read in conjunction with Article 8(4) of Regulation No 207/2009, the Board of Appeal found that the evidence clearly showed, first, that the intervener had carried out genuine trading activities under the non-registered earlier national trade mark before and on the date of application for registration of the contested mark, next, there was misrepresentation in relation to the services considered to be identical or similar and, finally, it could be assumed that the intervener would suffer harm given the similarity of the signs and the identity or similarity of the services.

II.    Procedure and forms of order sought

15      The applicant claims that the Court should:

–        declare the action admissible and well founded;

–        annul the contested decision;

–        order EUIPO to pay all of the costs.

16      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

17      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

III. Law

18      In the light of the filing date of the application for registration at issue, namely 1 July 2011, which is determinative for the purposes of identifying the applicable substantive law, the facts in the present case are governed by the substantive provisions of Regulation No 207/2009 (see to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Further, according to settled case-law, since procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.

19      Accordingly, in the present case, so far as concerns the substantive rules, the references made to Articles 8(4) and 60(1)(c) of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the parties must be understood as references to Articles 8(4) and 53(1)(c) of Regulation No 207/2009, which have an identical meaning.

20      In support of its action, the applicant raises two pleas in law. The first plea in law alleges infringement of the essential procedural requirements of the application for a declaration of invalidity. The second plea in law alleges, in essence, infringement of Articles 53(1)(c), read in conjunction with Article 8(4) of Regulation No 207/2009.

A.      Admissibility of the pleas in law

1.      Admissibility of the first plea in law, alleging infringement of the essential procedural requirements of the application for a declaration of invalidity

21      By its first plea in law, the applicant claims, in essence, that the application for a declaration of invalidity must be considered ‘null and void’ because the intervener does not state the basis on which it was founded, fails to identify the non-registered national trade mark relied on in support of that application and does not specify which national law it seeks to rely on.

22      EUIPO and the intervener contest the applicant’s arguments and contend, in essence, that that plea is inadmissible and in any case unfounded.

23      According to the case-law, the review that the General Court carries out under Article 72(3) of Regulation 2017/1001 is a review of the legality of decisions of the Boards of Appeal of EUIPO and it may annul or alter the decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds set out in Article 72(2) of Regulation 2017/1001, under which ‘the action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the TFEU, infringement of this Regulation or of any rule of law relating to their application or misuse of power’ (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 71 and the case-law cited).

24      Similarly, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court pursuant to the first paragraph of Article 53 of that same statute, and Article 177(1)(d) of the Rules of Procedure of the General Court, an application lodged in an action against EUIPO must, inter alia, contain the subject matter of the proceedings and a statement summarising the pleas relied on. It must, accordingly, specify the grounds on which the action is based, with the result that a mere abstract statement of the grounds is not sufficient to satisfy the requirements of the Statute of the Court of Justice of the European Union and the Rules of Procedure. Moreover, that statement – albeit concise – must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any further information. In order to ensure legal certainty and the sound administration of justice, it is necessary – if an action or, more specifically, a plea in law, is to be admissible – that the basic legal and factual particulars relied on be indicated coherently and intelligibly in the application itself (see judgment of 4 October 2018, Blackmore v EUIPO – Paice (DEEP PURPLE), T‑345/16, not published, EU:T:2018:652, paragraph 45 and the case-law cited).

25      In the present case, it should be noted that the applicant already raised the question of the ‘nullity’ of the application for a declaration of invalidity before the Board of Appeal which, in paragraph 18 of the contested decision, responded to each of the arguments by rejecting them.

26      By its first plea in law, the applicant very briefly sets out, in paragraph 30 of the application, the reasons why it considers that the application for a declaration of invalidity filed by the intervener should be declared ‘null and void’. To that end, it merely reiterates the same arguments it put forward before the Board of Appeal. Although an applicant is not required to explicitly refer to the specific legal rule on which he bases his claim, provided his argument is sufficiently clear to enable the other party and the EU judicature to identify without difficulty that rule (judgment of 30 September 2009, JOOP! v OHIM (!), T‑75/08, not published, EU:T:2009:374, paragraph 17), the fact remains that, in the present case, the applicant does not however rely on any error of law or procedure made by the Board of Appeal as referred to in Article 72(2) of Regulation 2017/1001.

27      In those circumstances, the first plea in law must be held to be inadmissible.

2.      Admissibility of the first and second parts of the second plea in law

28      EUIPO argues that the first and second complaints in the first part of the second plea in law, relating to the absence of a date on the evidence and to the probative value of the financial documents filed by the intervener, respectively, are inadmissible since the applicant makes general statements which are not sufficiently clear and precise to allow EUIPO to prepare its defence and the Court to rule on the dispute.

29      The intervener submits that the first part of the second plea in law, concerning the use of the non-registered earlier national trade mark, and the second part, relating to the existence of a right, for the benefit of the intervener, to prohibit the use of the contested mark in accordance with national law are inadmissible in that the applicant allegedly failed to identify their basis under Article 72(2) of Regulation 2017/1001.

30      It must be noted that it follows from the case-law referred to in paragraphs 24 and 26 above that, first, the application must contain the pleas and arguments relied on and a statement summarising those pleas. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. Second, the line of argument underpinning a complaint must be sufficiently clear to enable the defendant and the EU judicature to identify without difficulty the rule of law on which that complaint is based.

31      In the present case, while it is true that the applicant did not expressly mention the basis of both parts of the second plea, it should nevertheless be noted that it is clear from paragraphs 2 and 3 of the application that the applicant intends to bring the action on the basis of Article 72(2) of Regulation 2017/1001.

32      As regards the first complaint in the first part of the second plea, it is clear from paragraph 21 of EUIPO’s response that EUIPO was able to understand to which documents the applicant was referring among those filed by the intervener before the Cancellation Division. It is apparent, moreover, from the wording of paragraph 41 of the application and in particular from the expression ‘[the intervener] persisted and produced new documents which, however, were also undated’, that the applicant refers also to all the evidence filed by the intervener before the Board of Appeal.

33      As regards the second complaint of the first part, it is sufficiently clear from the applicant’s arguments that it criticises the Board of Appeal for relying on the intervener’s financial documents in order to conclude that the non-registered earlier national trade mark had been used, during the two reference periods, in the course of trade of more than mere local significance. At paragraphs 43 and 45 of the application, the applicant specifically refers to the financial documents in exhibits TS2 and TS2-1 to TS 2-6 filed by the intervener during the administrative proceedings. Moreover, it is clear in particular from paragraph 32 of EUIPO’s response that EUIPO understood the application in that way and answered it on the substance.

34      It follows that the application provides sufficient information to enable EUIPO and the intervener to identify the legal basis of the action and the pleas in law relied on and thus corresponds to the requirements of precision referred to above.

35      Therefore, both parts of the second plea in law must be found to be admissible in their entirety.

B.      Substance

36      The second plea in law, alleging infringement of Articles 53(1)(c), read in conjunction with Article 8(4) of Regulation No 207/2009, is divided in two parts. The first part is based on an error of assessment of the use of the non-registered national trade mark in the course of trade of more than mere local significance. The second part is based on an error of assessment of the existence of a right to prohibit the use of the contested mark under the law of the United Kingdom.

37      As a preliminary point, it must be noted that, by virtue of Article 8(4) of Regulation No 207/2009, read in conjunction with Article 53(1)(c) of that regulation, the proprietor of a non-registered trade mark or of a sign other than a mark may seek a declaration that an EU trade mark is invalid if that non-registered mark or that sign satisfies all of four conditions: (i) it must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that mark or sign must have been acquired in accordance with EU law or the law of the Member State in which it was used prior to the date of application for registration of the EU trade mark; and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those conditions are cumulative; thus, where a non-registered trade mark or a sign does not satisfy one of those conditions, the application for a declaration of invalidity based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (see judgment of 24 October 2018, Bacardi v EUIPO – Palírna U zeleného stromu (42 BELOW), T‑435/12, EU:T:2018:715, paragraph 43 and the case-law cited).

38      The first two conditions, namely those concerning the use in the course of trade and the significance of the sign or mark relied on, which must be more than merely local, arise from the wording itself of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (see judgment of 24 October 2009, 42 BELOW, T‑435/12, EU:T:2018:715, paragraph 44 and the case-law cited).

39      By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is justified, given that Regulation No 207/2009 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify the prohibition of the use of a subsequent trade mark (judgment of 24 October 2018, 42 BELOW, T‑435/12, EU:T:2018:715, paragraph 45 and the case-law cited).

1.      The first part, based on an error of assessment of the use of the non-registered earlier national trade mark in the course of trade of more than mere local significance

40      By the first part, the applicant claims, in essence, that the Board of Appeal erred in finding that the evidence adduced by the intervener was capable of demonstrating that the non-registered earlier national trade mark had been used in the course of trade and its significance was of more than mere local significance. In support of that part, the applicant puts forward three complaints.

(a)    The first complaint relating to the absence of a date on the evidence

41      By its first complaint, the applicant maintains that the evidence filed by the intervener before the Cancellation Division as supplemented by new evidence adduced before the Board of Appeal is mostly undated and, therefore, lacks sufficient evidential value.

42      EUIPO and the intervener contest the applicant’s arguments.

43      As regards, first, the documents filed by the intervener before the Cancellation Division, the applicant refers specifically  to exhibits TS 1, TS 3 and TS 4a.

44      It is apparent from the Board of Appeal’s file that exhibit TS 1 contains two screenshots of the intervener’s website. On the first screenshot, which shows the website on the date of the first witness statement, the date of 17 July 2017 is visible at the bottom right-hand side of the screenshot. So far as concerns the second screenshot, which shows the intervener’s website as it was on 8 December 2012, that date appears in the search bar and the date of 17 July 2017 is also visible at the bottom right hand-side of the screenshot. Those dates are consistent with the information in paragraph 14 of the first witness statement.

45      As regards exhibit TS 3 which includes extracts from the website of the British financial regulator and concern the intervener, the date of 17 July 2017 appears at the top left-hand side of each of the four pages of the document. In addition, that document contains the date as from which the intervener was authorised to provide regulated goods and services, and the dates as from which the intervener used various  trading names, all of which include the word ‘hottinger’.

46      As for exhibit TS 4a on the history of the name Hottinger, although it is true that it does not include a date, it is apparent, however, from paragraph 23 of the first witness statement and paragraph 10 of the second witness statement that it is an article published in Citywire Wealth Manager magazine in December 2012. According to the case-law, undated documents may, in certain cases, be used to establish use of a mark to the extent to which they serve to confirm facts inferred from other items of evidence (see judgment of 19 December 2019, Sta*Ware EDV Beratung v EUIPO – Accelerate IT Consulting (businessNavi), T‑383/18, not published, EU:T:2019:877, paragraph 72 and the case-law cited). It is also apparent from the case-law that the fact that a document is undated does not impugn its evidentiary value, in particular when its origin, probable date and content can be determined with sufficient certainty (see judgment of 11 July 2014, Sasol and Others v Commission, T‑541/08, EU:T:2014:628, paragraph 232 and the case-law cited).

47      As regards, second, the documents filed before the Board of Appeal, the applicant merely argues that the intervener adduced new and undated documents which should not have been accepted as proof of use. As already noted in paragraph 32 above, it must be held, in the absence of any further information in the application, that the applicant refers to all the documents filed by the intervener before that adjucating body of EUIPO.

48      In that regard, it is apparent from paragraph 10 of the contested decision that the intervener’s statement of grounds of appeal before the Board of Appeal included 11 annexes, namely the second witness statement and exhibits TS 2-1 to TS 2-10. It is also apparent from that paragraph of the contested decision and the Board of Appeal’s file that all those documents are dated.

49      In those circumstances, the first complaint must be rejected as unfounded.

(b)    The second complaint relating to the probative value of the financial documents

50      By its second complaint, the applicant claims that the financial documents in exhibits TS 2-1 to TS 2-6 adduced by the intervener before the Board of Appeal for the period 2011 to 2016 should, as the Cancellation Division had found in respect of the financial documents covering the period 2006 to 2010 and contained in exhibit TS 2, be considered insufficient to prove any use of the non-registered earlier national trade mark.

51      In particular, the applicant argues that (i) mere compliance with the rules does not constitute proof of use of the sign HOTTINGER in the course of trade, (ii) the documents in question do not prove the use of the non-registered earlier national trade mark, either for the management of banking assets or for financial services, (iii) they do not show use in the course of trade of more than mere local significance, and finally, (iv) they are private and not intended to be disclosed to the public.

52      EUIPO and the intervener dispute the applicant’s arguments.

53      According to settled case-law, the prevailing principle under EU law is that evidence may be freely adduced and that the only relevant criterion for the purpose of assessing the evidence adduced relates to its credibility. Accordingly, in order to assess the probative value of an item of evidence, regard should be had from the outset to the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (see judgment of 29 March 2019, All Star v EUIPO – Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 64 and the case-law cited).

54      Under Article 8(4) of Regulation No 207/2009, the use of an earlier sign cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the sign (see, to that effect, judgment of 23 October 2013, Dimian v OHIM – Bayer Design Fritz Bayer (Baby Bambolina), T‑581/11, not published, EU:T:2013:553, paragraph 29).

55      Moreover, it must be noted that the ratio legis of Article 8(4) of Regulation No 207/2009 consists in restricting the number of conflicts between signs, by preventing an earlier sign, which is not sufficiently important or significant, from making it possible to challenge either the registration or the validity of an EU trade mark. Furthermore, the significance of a sign used to identify specific trading activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, first, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) of Regulation No 207/2009. Next, account must be taken of the economic dimension of the sign’s significance, which is assessed in the light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which it is known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgment of 24 March 2009, Moreira da Fonseca v OHIM – General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, EU:T:2009:77, paragraphs 36 to 37).

56      In the present case, first, it must be noted that the Board of Appeal’s file shows that the Cancellation Division, contrary to what the applicant claims, did not examine the evidence adduced by the intervener for the period ending on 10 January 2011, that is to say the priority date claimed by the applicant in its application for registration of the contested mark. The Cancellation Division therefore did not rule on the sufficiency of the financial documents for the purpose of demonstrating the use of the non-registered earlier national trade mark during the period referred to above.

57      The Cancellation Division merely noted that, since the intervener has not filed any evidence to show whether the non-registered earlier national trade mark was still being used in the course of trade on the filing date of the application for a declaration of invalidity, one of the requirements imposed by Article 8(4) of Regulation No 207/2009 was not met and, therefore, it rejected the application for a declaration of invalidity.

58      Second, it is apparent from the contested decision that the Board of Appeal dealt with the issue of the use of the non-registered national trade mark in the course of trade of more than mere local significance in paragraphs 29 to 36 of that decision.

59      As regards the financial documents adduced by the intervener, the Board of Appeal held, in paragraph 34 of the contested decision, that those documents were contained in exhibits TS 2 and TS 2-1 to TS 2-6 and they supported the statements of the intervener’s managing director concerning the annual turnovers achieved in the period 2006 to 2016 under the non-registered earlier national trade mark.

60      Those assessments by the Board of Appeal do not contain any error.

61      It is apparent from the Board of Appeal’s file that each of the annual financial statements filed by the intervener for the period 2006 to 2016 contains a statement that the principal activities of the intervener were ‘portfolio management advisory and discretionary services’. Those statements also indicate the turnover’s value and its geographical distribution. Since they have been audited by an independent audit firm, those financial statements are highly reliable and therefore have a high evidential value.

62      Furthermore, it must be noted that it is also apparent from the financial documents in question that the intervener is authorised by the Financial Conduct Authority (financial regulation body, United Kingdom) to provide activities regulated by the latter. Exhibit TS 3, which includes an extract taken from that body’s website and shows the intervener’s name as a beneficiary of the permission and the trading names used by it, all of which include the term ‘hottinger’, confirms  the above.

63      Moreover, it is apparent from the contested decision that the Board of Appeal did not rely exclusively on those financial documents in order to find that the non-registered earlier national trade mark has been used for the services in question. The Board of Appeal found, in paragraph 34 of the contested decision, that the business activities carried out under the non-registered earlier national trade mark were also confirmed by the press articles in exhibits TS 4a, TS 2-7 and TS 2-8 and by exhibits TS 5a and TS 5b concerning transactions carried out by the intervener’s managing director on its behalf.

64      As for the applicant’s argument that the financial documents do not prove use of the non-registered earlier national trade mark for banking assets management services, suffice it to note that those services are not part of those for which the intervener claims use, as is apparent from paragraphs 6 and 35 of the contested decision and the Board of Appeal’s file.

65      Finally, as for the argument that the financial documents adduced by the intervener are private and are not intended for public disclosure, it must be borne in mind that the principle of the unfettered adduction of evidence is the corollary to the principle of the unfettered evaluation of evidence which confers on the parties the possibility to produce before the EU judicature any evidence lawfully obtained that they consider relevant to support their arguments. That unfettered adduction of evidence contributes to guaranteeing the parties’ right to an effective remedy enshrined in Article 47 of the Charter of Fundamental Rights of the European Union (see judgment of 4 July 2017, European Dynamics Luxembourg and Others v European Union Agency for Railways, T‑392/15, EU:T:2017:462, paragraph 51 and the case-law cited). Therefore, even if the intervener’s financial documents were private, it was for the intervener to assess whether they could be disclosed to third parties by means of adducing them in the present dispute.

66      In the light of all the above, the second complaint must be rejected as unfounded.

(c)    The third complaint, relating to the absence of evidence allowing an evaluation of the relevant public’s knowledge of the non-registered earlier national trade mark

67      In its third complaint, the applicant claims that the intervener did not adduce any document, such as evidence concerning the number of visitors to its website, investigations concerning the use or reputation of the non-registered earlier national trade mark, showing that the relevant public had knowledge of the non-registered earlier national trade mark.

68      EUIPO and the intervener contest the applicant’s arguments.

69      It is apparent from paragraph 30 of the contested decision that the Board of Appeal, relying on all the evidence adduced by the intervener, considered that the latter had sufficiently shown that the non-registered earlier national trade mark was used in the United Kingdom in the course of trade and was of more than mere local significance. The various evidence taken into account and the findings which the Board of Appeal drew from that evidence are set out in detail in paragraphs 34 to 36 of the contested decision.

70      As regards more specifically the knowledge, by the relevant public, of the non-registered earlier national trade mark, it is implicitly but necessarily apparent from paragraph 34 of the contested decision that the Board of Appeal found that such knowledge has been proved by the evidence adduced by the intervener. It is indeed reasonable to take the view that an undertaking’s business name – which is also its non-registered national trade mark – is known in the territory in which that undertaking performs, entirely or in the main, its activities, in particular where that undertaking consistently achieves an annual turnover representing an amount in the seven digit range.

71      The two witness statements of the intervener’s managing director and the accompanying financial documents, taken into account by the Board of Appeal in paragraph 34 of the contested decision, show the turnover’s amount and the fact that, depending on the years, 100% or 60% of that turnover was achieved in the United Kingdom. That finding is supported by exhibit TS 5a, which consists of a download of the fixed income trading log showing the individual trades executed by the intervener’s managing director on its behalf, and exhibit TS 5b, which represents contract notices issued in relation to transactions executed by the intervener’s managing director on its behalf.

72      As regards the press articles in exhibits TS 4a, TS 2-7 and TS 2-8 and also examined in paragraph 34 of the contested decision, they highlight the intervener’s various trading  activities and in particular a presence on the market since 2001, a volume of managed assets of several hundred million euro, a significant amount of accounts opened for its customers and the type of customers and of services provided.

73      Similarly, it is apparent from the contested decision that the intervener also adduced exhibits TS 4c and TS 2-9. Exhibit TS 4c includes a selection of four ‘letters to the editor’ written by the director of investment management of the intervener’s predecessor, Hottinger & Co, and published in the financial and economic daily newspaper of reference The Financial Times between 2006 and 2009. It is also apparent from the circulation certificate covering the period from 1 to 28 May 2017, included in the Board of Appeal’s file, that the average print number for each edition of that daily newspaper was 195 167, 60 000 of which circulated in the United Kingdom. It is also apparent that that daily newspaper is also distributed in digital format. Thus, on average, 7 081 digital copies per issue were distributed during that period, including 1 333 copies in the United Kingdom.

74      So far as concerns exhibit TS 2-9, it contains examples of commercial correspondence between the intervener and prominent organisations.

75      Furthermore, as the intervener correctly contended in paragraph 34 of the response, the evidence relating to the number of visitors to its website, the investigations concerning the use or reputation of the mark are merely a part of the potential evidence able to be used to substantiate its application for a declaration of invalidity. While it is true that the intervener did not carry out such investigations, it must be held that it adduced other evidence showing that the relevant public had knowledge of the non-registered earlier national trade mark.

76      In the light of the foregoing, the third complaint and, therefore, the first part of the second plea in law in its entirety, must be rejected.

2.      The second part, based on an error of assessment of the existence of a right to prohibit the use of the contested mark under the law of the United Kingdom

77      In support of that part, the applicant presents three complaints, relating to the existence of ‘goodwill’ (the attractive force which brings in custom) attached to the intervener’s services, misrepresentation and damage to goodwill.

78      As a preliminary point, it must be noted that it follows from the combined reading of Article 53(1)(c) and Article 8(4) of Regulation No 207/2009 that the proprietor of a non-registered trade mark or other sign used in the course of trade of more than mere local significance may obtain the cancellation of a more recent EU trade mark where and in so far as, according to the law of the Member State governing that sign, the rights over that sign were acquired before the date of application for registration of the EU trade mark and, second, that sign gives its proprietor the right to prohibit the use of a subsequent mark.

79      For the purposes of applying Article 8(4) of Regulation No 207/2009, the Board of Appeal must take into consideration both the national legislation applicable by virtue of the reference made by that provision and the judicial decisions delivered in the Member State concerned. On that basis, the applicant for a declaration of invalidity must establish that the sign at issue falls within the scope of the law of the Member State relied on and that it enables the use of a subsequent mark to be prohibited (see judgment of 11 June 2009, Last Minute Network v OHIM – Last Minute Tour (LAST MINUTE TOUR), T‑114/07 and T‑115/07, EU:T:2009:196,EU:T:2009:196, paragraph 47 and the case-law cited).

80      In this case, it is not disputed that the law of the Member State applicable to the non-registered earlier national trade mark is the Trade Marks Act 1994 (United Kingdom), section 5(4) of which provides:

‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –

a) by virtue of any rule of law (in particular, the law of passing-off) protecting an unregistered trade mark or other sign used in the course of trade …’

81      It follows from section 5(4) of the Trade Marks Act, as interpreted by the national courts (decision of the House of Lords Reckitt & Colman Products Ltd v Borden Inc. [1990] RPC 341, 406 HL (‘Reckitt decision’)), that the opponent must establish, in accordance with the legal rules governing actions for passing-off, as laid down by the law of the United Kingdom, that three conditions are satisfied: namely, first, the goodwill acquired (that is to say, the attractive force which brings in custom) by the non-registered trade mark or the sign at issue, second, misrepresentation by the proprietor of the subsequent mark and, third, damage caused to that goodwill (see judgment of 18 July 2017, Alfonso Egüed v EUIPO – Jackson Family Farms (BYRON), T‑45/16, EU:T:2017:518, paragraph 43 and the case-law cited).

82      The applicant’s three complaints under that part of the plea in law are therefore aimed at the Board of Appeal’s findings relating to the above three conditions which the non-registered earlier national trade mark must satisfy pursuant to the law of the United Kingdom.

(a)    The first complaint concerning the existence of goodwill

83      By its first complaint, the applicant claims that the Board of Appeal erred in finding that the intervener had proved that it had acquired goodwill. In its opinion, the only evidence capable of showing acquisition of goodwill is that relating to sales made under the non-registered earlier national trade mark and to the fact that the relevant public associates the characteristic element of the mark with the goods or services  in question.

84      In that regard, first, it maintains that the changes of the intervener’s business name, even though they did not significantly affect goodwill, necessarily had an impact on its characteristic element and, consequently, on the other two conditions of passing-off.

85      Second, the applicant claims that the Board of Appeal held in paragraph 45 of the contested decision that goodwill had been acquired for investment and capital management as well as financial and corporate advisory services. Those categories of services are much broader than those set out in the evidence adduced by the intervener. In particular, it is unlikely that customers can regard the non-registered earlier national trade mark as having acquired significant goodwill for financial services.

86      According to the applicant, monetary intermediation services, estate management, investment activities and contracts of securities and commodities brokerage services are included in the broader category of financial and insurance activities. The intervener has not provided any evidence showing the acquisition of goodwill for the first three services. As for the fourth service, namely contracts of securities and commodities brokerage services, the only evidence adduced could not be relied on to prove goodwill for the broader category of financial and insurance activities.

87      Third, it takes the view that the articles in the publication Business Wire cannot serve as evidence for the acquisition of goodwill, since it is not an independent organ of the press, as those publications are only made at the request of undertakings without any check that the activity declared really exists.

88      Fourth, the proof of use in connection with services other than family wealth management is weak and originates mainly from the intervener’s director own statements.

89      Finally, fifth, the applicant claim that the only service that can be identified on the basis of the evidence adduced by the intervener is the activity of negotiation of fixed-income securities using the Bloomberg platform. However, even for that service, the existence of goodwill is debatable due to the absence of any invoices relating to the use of that service.

90      The applicant concludes therefrom that goodwill relates only to wealth management services for rich individuals and their families.

91      Furthermore, the applicant considers that since 60% of the intervener’s turnover was achieved in the United Kingdom, only that percentage was relevant for the purposes of the examination of the conditions of passing-off. In addition, although that percentage may serve to show the significance of the non-registered earlier national trade mark, it did not under any circumstances prove the acquisition of goodwill.

92      EUIPO and the intervener contest the applicant’s arguments.

93      As the General Court has already found, it is apparent from the national case-law that the property protected by an action for passing-off is not property in a word or name, which third parties are restrained from using, but the very customer base which is undermined by the usage in question (Lord Parker in the High Court (Chancery Division) decision Burberrys v J.C. Cording & Co. Ltd [1909] 26 R.P.C. 693), since the reputation of a trade mark is the power of attraction which brings in custom and the criterion which distinguishes an established business from a new business (Lord Macnaghten in the decision of the House of Lords, Inland Revenue Commissioners v Muller & Co’s Margarine [1901] AC 217, 223 HL), (see judgment of 17 January 2019, Turbo-K International v EUIPO – Turbo-K (TURBO-K), T‑671/17, not published, EU:T:2019:13, paragraph 57 and cited case-law).

94      Goodwill is normally proved by evidence of, inter alia, trading activities, advertising, and customers’ accounts. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill (see judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraph 49 and the case-law cited).

95      Moreover, the General Court also noted that, according to United Kingdom law, the action for passing-off protects goodwill regardless of the size of the undertaking. The mere fact that the business of the claimant seeking to maintain an action for passing-off is very small does not of itself prevent it having goodwill since a very slight trading activity has been held to be sufficient to create goodwill (Wadlow, C., The Law of Passing-Off: Unfair Competition by Misrepresentation, 5th Edition, Sweet & Maxwell, London, 2016, points 3-13 and 3-64) (judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraphs 71 and 75). Thus, even small businesses can have goodwill since the courts of the United Kingdom are very unwilling to assume that a business can have customers but no goodwill (judgment of 9 December 2010, Golden Elephant Brand, T‑303/08, EU:T:2010:505, paragraph 115).

96      Moreover, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM – Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 34 and the case-law cited).

97      As regards statements from one of the parties, it is apparent from the case-law that they can be attributed probative value only if they are supported by other evidence (see judgment of 18 July 2017, BYRON, T‑45/16, EU:T:2017:518, paragraph 63 and the case-law cited).

98      In the present case, it is therefore necessary to examine whether the evidence adduced by the intervener allows for the existence of goodwill to be established.

99      It is apparent from paragraph 45 of the contested decision that the Board of Appeal based its analysis of the existence of goodwill on all the documents made available to it, as listed in paragraphs 7, 8 and 10 of the contested decision. The Board of Appeal thus carried out an overall assessment of the evidence, as required by the case-law (see judgment of 13 June 2019, MPM-Quality v EUIPO – Elton Hodinářská (MANUFACTURE PRIM 1949), T‑75/18, not published, EU:T:2019:413, paragraph 26 and the case-law cited).

100    Moreover, it is apparent from paragraph 45 of the contested decision that the Board of Appeal gave particular importance to the two witness statements of the intervener’s managing director and to exhibits TS 2, TS 3, TS 4a, TS 5a, TS 5b, TS 2-1 to TS 2-8 which substantiated them.

101    According to the first witness statement, the intervener was incorporated on 14 July 1981 and the term ‘hottinger’ is an integral part of its commercial identity since 21 October 1987. The intervener is a private wealth manager providing investment management, financial, corporate advisory and concierge services. The services offered include, inter alia, wealth management services as well as investment management and capital partner services. The annual turnover for the years 2006 to 2010 was in the seven digit range. Whereas, in 2006 and 2007, the total turnover was achieved in the United Kingdom, as from 2008 it was only at approximately 60% thereof.

102    In its second witness statement, the intervener’s managing director states, inter alia, that the registered company status was noted to have been continuous since 2002 and that the trading name and registration were in place in each of the years of the second relevant period, namely from 2011 to 2016.

103    Those assertions are supported by exhibits TS 2, TS 3, TS 4a, TS 5a and TS 5b for the first witness statement and exhibits TS 2-1 to TS 2-8 for the second.

104    Thus, exhibit TS 2, first, contains an extract taken from Companies House’s website (register of companies, United Kingdom) showing, inter alia, the current company name, the history of the changes of the company name and the nature of the company’s activity, namely that of security and commodity contracts dealing activities. Second, that exhibit comprises the intervener’s annual reports and financial statements for the years 2006 to 2010; the same documents for the years 2011 to 2016 are included in exhibits TS 2-1 to TS 2-6. Those reports, filed at Companies House, show that the intervener’s main activity is the provision of portfolio management advisory and discretionary services. Similarly, they show the amount of the turnover and the geographical segments to which it corresponds.

105    Exhibit TS 3 is an extract from the website of the financial regulation body. It is apparent from that document that the intervener is authorised to provide regulated financial products and services. It also states that a company may use several trading names under the same permission and lists those associated with the intervener. The fact remains that all the trading names mentioned in that document include the term ‘hottinger’, together with terms and expressions such as ‘investment’, ‘management’, ‘& Cie’, ‘& Co’, ‘advisory’, ‘capital’, ‘financial’, ‘wealth’, ‘family office’.

106    The article from the magazine Wealth Manager in exhibit TS 4a recounts the intervener’s history and provides details, inter alia, of the number of customer accounts held and the amount in pounds sterling of managed assets.

107    As regards exhibits TS 5a and TS 5b, they list a certain number of transactions carried out, according to the first witness statement, by the intervener under the name ‘HOTTINGER & CO LTD’ between 2007 and 2010. They show that the intervener carried out investment and trade activities in the United Kingdom.

108    Finally, exhibits TS 2-7 and TS 2-8 include articles published in Business Wire which refer to quite considerable amounts managed by the intervener. Further, it is mentioned in exhibit TS 2-7 that the intervener provides portfolio management and advisory services and the new management mandate includes services for discretionary investment management and brokerage agreements. Exhibit TS 2-8 refers inter alia to investment, credit, insurance and corporate advisory services.

109    It is therefore clear that the Board of Appeal, after examining the evidence as a whole, was right to find that it amounted to an accumulation of evidence showing that the intervener had acquired goodwill in the services referred to in the application for a declaration of invalidity and referred to in paragraph 45 of the contested decision.

110    As for the applicant’s argument that Business Wire is not an independent organ of the press, it must be noted, as EUIPO rightly argued in paragraph 51 of the response, that, even if the articles published in Business Wire were to be considered as no more than mere publicity, the article published in Wealth Manager contributes to confirm the Board of Appeal’s findings.

111    As regards the applicant’s argument that the investment and capital management as well as financial and corporate advisory services, in relation to which the Board of Appeal has held that goodwill had been acquired, are part of much broader categories than those set out in the evidence adduced by the intervener, it must be noted, as EUIPO argued at paragraph 64 of the response, that even if goodwill had been acquired only for wealth management services for rich individuals and their families, those services are also partly identical and partly similar to the contested services.

112    Finally, the applicant’s argument that only the percentage of turnover achieved in the United Kingdom was relevant for the examination of the conditions of passing-off must be rejected. Article 8(4) of Regulation No 207/2009 does not require that the use must be proved in the territory of the Member State of which the law is invoked (judgment of 9 July 2010, Grain Millers v OHIM – Grain Millers (GRAIN MILLERS), T‑430/08, not published, EU:T:2010:304, paragraph 41).

113    The applicant’s first complaint must therefore be dismissed.

(b)    The second complaint concerning misrepresentation

114    By its second complaint, the applicant claims that the Board of Appeal erred in finding that misrepresentation must be proved by taking into account the customers of the proprietor of the contested trade mark and observes that, according to national case-law, as established in paragraphs 64 to 67 of the judgment of 11 June 2009, LAST MINUTE TOUR (T‑114/07 and T‑115/07, EU:T:2009:196), that analysis was to be carried out by reference to the customers of the applicant for a declaration of invalidity.

115    According to the applicant, although the assessment of the likelihood of confusion is relevant under trade mark law, the intervener has provided no evidence of the likelihood of customers mistaking the signs at issue.

116    In any event, in the applicant’s view, the Board of Appeal’s assessment is vitiated by errors relating, in essence, to the definition of the relevant public and the taking into account of the goodwill that the applicant had acquired in the contested mark.

117    EUIPO concedes that the Board of Appeal wrongly considered that the misrepresentation must be assessed with regard to the customers of the proprietor of the contested mark. In its view, that error is probably attributable to a misquotation, in paragraph 46 of the contested decision, of paragraph 73 of the judgment of 17 January 2019, TURBO-K (T‑671/17, not published, EU:T:2019:13).

118    Moreover, it accepts that there was a discrepancy between the last sentence of paragraph 46 and paragraph 47 of the contested decision relating to the inclusion of the public at large in the composition of the relevant public. In that regard, EUIPO maintains that the relevant public was composed not of the public at large, but of the intervener’s customers, who are sophisticated private individuals, charities, trusts and institutions.

119    However, EUIPO argues that misrepresentation necessarily works both ways because without an overlap of customers, there cannot be misrepresentation. Furthermore, since the services in question concern the same field of activity, the intervener and the applicant share a common pool of customers and potential customers. The fact that the Board of Appeal referred to the applicant’s customers as the relevant public should not affect the outcome of the case, since those customers will most likely include actual customers and will certainly include the intervener’s potential customers.

120    EUIPO contests the applicant’s arguments as to the remainder.

121    The intervener contests the applicant’s arguments.

122    It is indeed true that the General Court has already held that, according to national case-law (Reckitt decision), misrepresentation by a defendant in an action for passing-off, whether or not it is intentional, is a representation which is likely to lead the claimant’s customers to attribute to it the commercial origin of the goods and services offered by the defendant (judgments of 11 June 2009, LAST MINUTE TOUR, T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 92; of 9 December 2010, Golden Elephant Brand, T‑303/08, EU:T:2010:505, paragraph 132; and of 17 January 2019, TURBO-K, T‑671/17, not published, EU:T:2019:13, paragraph 73).

123    It is apparent, however, from paragraph 60 of the judgment of 11 June 2009, LAST MINUTE TOUR (T‑114/07 and T‑115/07, EU:T:2009:196), that the General Court, relying on the Reckitt decision, had found that the public with regard to which the misleading nature of the representation had to be assessed was composed solely of the consumer of goods and services that are offered by the claimant in an action for passing-off, and not of the abstract notion of the average consumer residing in the United Kingdom. Therefore, the Court did not distinguish between the customers of a claimant in an action for passing-off and those of the defendant by excluding one in comparison to the other.

124    Furthermore, it is apparent from the national case-law that the claimant in an action of passing-off must prove the existence of a ‘likely confusion among the common customers of the parties’ (decision of the House of Lords, Harrods Ltd v Harrodian School Ltd [1996] RPC 697, p. 714, paragraph 15 (‘Harrods decision’).

125    In the present case, it is clear from paragraph 54 of the contested decision that the Board of Appeal, after having compared the services in question, found that there was a misrepresentation for the services considered identical or similar. The Board of Appeal therefore implicitly but necessarily took into account that customer base which is interested in the services provided both by the applicant and the intervener.

126    Given that, in the circumstances of the present case, there would be misrepresentation in any event, irrespective of the customer segment taken into consideration, the fact that the Board of Appeal considered that the misrepresentation had to be assessed with regard to the customers of the contested mark’s proprietor has no effect on the lawfulness of the contested decision.

127    Furthermore, it is apparent from national case-law that for an action for passing-off to be well founded, the misrepresentation must lead to a likelihood of confusion on the part of the relevant public. In order to assess the likelihood of confusion, account must be taken of the degree of similarity of the signs at issue, the existence of a common field of activity and the existence of evidence of actual confusion (see, to that effect, Harrods decision, p. 716, paragraph 20 and 25, and p. 720, paragraph 30).

128    As regards the comparison of the signs at issue, the Board of Appeal found that they were visually and phonetically highly similar and that, conceptually, they were devoid of any meaning for the English-speaking public.

129    The applicant does not dispute those assessments of the Board of Appeal. Moreover, there is no evidence in the file capable of casting doubt on those assessments.

130    As regards the assessment of the existence of a common field of activity, the Board of Appeal carried out a comparison of the services at issue and found that they were partly identical, partly highly similar, partly similar to an average degree. It also found that the services of ‘advertising; publication of publicity texts; updating of the advertising documentation’ in Class 35 were dissimilar to the services covered by the non-registered earlier national trade mark.

131    The applicant does not dispute those assessments of the Board of Appeal. Moreover, there is no evidence in the file capable of casting doubt on those assessments. The applicant’s argument that it offers a comprehensive range of banking services whereas the intervener offers services to wealthy individuals and families merely reinforces the Board of Appeal’s findings relating to the existence of similar or even identical services.

132    As regards the applicant’s argument that, since the intervener’s customers are mainly sophisticated private individuals, but also charities, trusts and institutions, it is highly likely that they are very attentive and that they will not confuse the signs at issue, it is unfounded. Contrary to what is implied by the applicant, taking into account the high visual and phonetic similarity of the signs and the fact that the services in question are, inter alia, partly identical and partly highly similar, the fact that the relevant public is composed of persons whose degree of attention may be considered to be high is not sufficient to rule out the possibility that the relevant public might believe that the services in question come from the same undertaking or, as the case may be, from economically linked undertakings.

133    As for the applicant’s argument that the intervener has not provided any evidence regarding the likelihood of the risk of mistaken belief although the burden of proof lies with it, it must be noted that, according to national case-law, the availability of such evidence is significant, but not indispensable. A court seised of an action for passing-off may decide that passing-off has been established even if there is no evidence of confusion (Harrods decision, p. 722, paragraphs 25 and 30).

134    Finally, as regards the Board of Appeal’s consideration of the goodwill that the applicant had allegedly acquired in respect of the contested mark, it must be noted that, according to settled case-law, the purpose of an action before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO within the meaning of Article 72 of Regulation 2017/1001. It follows from that provision that facts not relied on by the parties before the adjudicatory bodies of EUIPO may not be relied on at the stage of the action before the Court and that the Court may not re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (judgments of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraphs 50 to 52, and of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 136 to 138).

135    It must be stated that the applicant invoked goodwill attached to the contested mark for the first time before the Court. It is apparent from its pleadings submitted before EUIPO that the applicant at no stage expressly argued, either before the Cancellation Division or the Board of Appeal, the existence of goodwill. Therefore that argument is inadmissible.

136    It follows that the Board of Appeal was correct in holding, in paragraph 54 of the contested decision, that there was a likelihood of confusion for the contested services which were found to be identical or similar to different degrees to the services covered by the non-registered earlier national trade mark.

137    In the light of all the above, the second complaint must be rejected as unfounded.

(c)    The third complaint concerning the damage caused to goodwill

138    By its third complaint, the applicant claims that there was no likelihood of confusion or intention to mislead the relevant public that would be likely to cause damage to the intervener.

139    Furthermore, the intervener has not demonstrated that it had suffered any damage.

140    EUIPO and the intervener dispute the applicant’s arguments.

141    As the Court has already found, according to United Kingdom law, the absence of evidence of specific instances of confusion may play a role in the sense that it is possible that that fact may reflect adversely on the claimant’s case in an action for passing-off, if the goods of the defendant to that action have been openly on the market for a long time. Nonetheless, absence of evidence of specific instances of confusion may often be readily explained and are rarely decisive (judgment of 9 December 2010, Golden Elephant Brand, T‑303/08, EU:T:2010:505, paragraph 141).

142    In the present case, the Board of Appeal found – a finding which the applicant has not disputed – that the signs at issue were visually and phonetically highly similar and the services in question were partly identical or partly similar to different degrees. In such circumstances, the absence of evidence of specific instances of confusion cannot be regarded as a determining factor.

143    Therefore, the Board of Appeal rightly found that, in the circumstances of the present case, there was no need for the intervener to adduce specific evidence of instances of confusion.

144    In view of all those considerations, the applicant’s third complaint must be rejected as unfounded and, therefore, the second plea in law must be rejected in its entirety.

145    The action must therefore be dismissed in its entirety.

IV.    Costs

146    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

147    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.       Orders H.R. Participations SA to pay the costs.

Delivered in open court in Luxembourg on 16 December 2020.

*      Language of the case: English.

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