JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
22 January 2025 (*)
( EU trade mark - Invalidity proceedings - EU figurative mark MK MICHAEL MICHELE - Earlier EU figurative mark MK MICHAEL KORS - Genuine use of the earlier mark - Article 57(2) of Regulation (EC) No 207/2009 (now Article 64(2) of Regulation (EU) 2017/1001) - Relative ground for invalidity - Article 8(5) and Article 53(1)(a) of Regulation No 207/2009 (now Article 8(5) and Article 60(1)(a) of Regulation (EU) 2017/1001) )
In Case T‑1053/23,
Tecom Master, SL, established in Alicante (Spain), represented by T. Villate Consonni, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Michael Kors (Switzerland) International GmbH, established in Manno (Switzerland), represented by J. van Manen, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva and E. Tichy-Fisslberger (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Tecom Master, SL, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 September 2023 (Case R 1959/2021-1) (‘the contested decision’).
Background to the dispute
2 On 8 April 2020, the intervener, Michael Kors (Switzerland) International GmbH, filed with EUIPO an application for a declaration of invalidity of the EU trade mark that had been registered following an application filed on 4 September 2014 by the predecessor in law of the applicant in respect of the following figurative sign:
3 The goods covered by the contested mark in respect of which a declaration of invalidity was sought were, following the restriction made in the course of the proceedings before EUIPO, in Classes 18 and 25 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 corresponded, for each of those classes, to the following description:
– Class 18: ‘Luggage, bags, wallets and other carriers; Umbrellas and parasols; Leather cloth’;
– Class 25: ‘Headgear; Footwear; Clothing’.
4 The application for a declaration of invalidity was based, inter alia, on the earlier EU figurative mark, reproduced below, registered on 13 July 2004, designating, inter alia, goods in Classes 18 and 25 and corresponding, for each of those classes, to the following description:
– Class 18: ‘Carrying cases, bags, luggage, handbags, purses, wallets’;
– Class 25: ‘Clothing, footwear; belts’:
5 The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 52(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 59(1)(b) of 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)), Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001) and Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation (now Article 8(5) of Regulation 2017/1001).
6 Following the request made by the applicant, EUIPO invited the intervener to adduce evidence of the genuine use of the earlier mark relied on in support of the application for a declaration of invalidity. The intervener complied with that request within the prescribed period.
7 On 30 September 2021, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 52(1)(b) of Regulation No 207/2009.
8 On 24 November 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9 By the contested decision, the Board of Appeal dismissed the appeal on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation. Specifically, first, it concluded that genuine use of the earlier mark had been demonstrated for the goods in Classes 18 and 25. Second, it took the view that the relevant public consisted of the general public, composed of average consumers with an average level of attention. Third, it concluded that the earlier mark enjoyed a strong reputation among the general public and was known as an iconic and luxury brand. Fourth, it observed that the signs concerned had an average degree of visual, phonetic and conceptual similarity. Fifth, it concluded that the relevant public would reasonably be able to establish a link between the contested mark and the earlier mark. Sixth, it considered that the applicant’s use of the contested mark for the goods included in Classes 18 and 25 took unfair advantage of the earlier mark. Seventh, it found that the applicant had neither claimed nor proven a due cause for the use of the contested mark.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– reinstate the registration of the contested mark.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event that an oral hearing is convened.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by the intervener.
Law
13 Given the date on which the application for registration at issue was filed, namely 4 September 2014, which is decisive for the purposes of identifying the applicable substantive law, the facts of the 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). Moreover, since, according to settled case-law, 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 case is governed by the procedural provisions of Regulation 2017/1001 and Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
14 Consequently, in the present case, so far as concerns the substantive rules, the references made by the parties in their pleadings to Article 60(3), Article 59(1)(b) and Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) and with Article 8(5) of that regulation, and Article 64(2) and(3) of Regulation 2017/1001 must be understood as referring, respectively, to Article 53(3), Article 52(1)(b), Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and with Article 8(5) of that regulation, and Article 57(2) and (3) of Regulation No 207/2009.
15 In the action, the applicant relies, in essence, on five pleas in law, alleging, first, infringement of Article 53(3) of Regulation No 207/2009; second, infringement of Article 52(1)(b) of Regulation No 207/2009; third, infringement of Article 57(2) and (3) of Regulation No 207/2009; fourth, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b); and, fifth, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation.
16 The Court considers it appropriate to begin by examining the first plea in law, then the third to fifth pleas in law and, finally, the second plea in law.
Admissibility of the first plea in law, alleging infringement of Article 53(3) of Regulation No 207/2009
17 In support of the first plea in law, the applicant submits, in essence, that the application for a declaration of invalidity must be rejected on the basis of Article 53(3) of Regulation No 207/2009. In the applicant’s view, the intervener had, expressly and in writing, given its consent to the registration of the contested mark and agreed to the use of that mark by withdrawing its opposition to the mark’s registration. The applicant claims that declaring the contested mark invalid would be contrary to the interests of legal certainty of the proprietor of that mark after consent had been given in full knowledge of the application and the use of the contested mark had been acquiesced to for several years. Furthermore, it states that it has entered into commercial commitments which may entail a significant financial loss.
18 EUIPO and the intervener contend that the first plea is inadmissible, since the applicant raises it for the first time before the Court. Furthermore, and in any case, they contest the applicant’s arguments.
19 The purpose of actions brought before the Court pursuant to Article 72(2) of Regulation 2017/1001 is to secure a review of the lawfulness of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that review to be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO – Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 16 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
20 Therefore, it is not the Court’s function to examine new pleas introduced before it. To allow the examination of those new pleas would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the pleas introduced for the first time before the Court must be declared inadmissible and there is no need to examine them (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
21 In that regard, it is apparent from EUIPO’s file that the arguments relating to the alleged consent to the registration of the contested mark and to the alleged limitation in consequence of acquiescence were raised by the applicant for the first time before the Court.
22 It follows that the first plea must be rejected as inadmissible.
The third plea in law, alleging infringement of Article 57(2) and (3) of Regulation No 207/2009
23 In the context of the third plea in law, alleging infringement of Article 57(2) and (3) of Regulation No 207/2009, the applicant calls into question certain assessments made by the Board of Appeal concerning the evidence intended to establish the genuine use of the earlier mark as registered. It claims, in essence, that genuine use is demonstrated not in respect of the earlier mark, but only in connection with the element ‘michael kors’. It adds that the differences between the earlier mark as registered, namely MK Michael Kors, and the element used, ‘michael kors’, are significant and not secondary, and they therefore alter the distinctive character of the earlier mark.
24 EUIPO, supported by the intervener, contests the applicant’s arguments.
25 As a preliminary point, it should be borne in mind that, under Article 57(2) and (3) of Regulation No 207/2009, the proprietor of an EU trade mark may require proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier mark has been put to genuine use in the territory in which it is protected in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her application, provided the earlier mark has at that date been registered for not less than five years.
26 Furthermore, if, at the date on which the EU trade mark application was published, the earlier mark had been registered for not less than five years, the proprietor of the earlier mark must also furnish proof that, in addition, the earlier mark has been put to genuine use in that territory during the period of five years preceding that publication. In the absence of proof to this effect the application for a declaration of invalidity is to be rejected. If the earlier mark has been used in relation to part only of the goods or services for which it is registered, it is, for the purpose of the examination of the application for a declaration of invalidity, to be deemed to be registered in respect only of that part of the goods or services.
27 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it is registered, in order to create or preserve an outlet for those goods; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see, to that effect, judgment of 4 April 2019, Hesse and Wedl & Hofmann v EUIPO (TESTA ROSSA), T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 29 and the case-law cited).
28 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products protected by the mark, the nature of those products, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 17 September 2019, Rose Gesellschaft v EUIPO – Iviton (TON JONES), T‑633/18, not published, EU:T:2019:608, paragraph 20 and the case-law cited).
29 Pursuant to Article 10(3) and (4) of Delegated Regulation 2018/625, proof of use of an earlier mark must relate to the place, time, extent and nature of use made of that mark and is limited, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
30 To examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited). 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 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 66 and the case-law cited).
31 Thus, it is not necessary for each item of evidence to give information about all four elements to which proof of genuine use must relate, namely the place, time, extent and nature of use. Each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning (see judgment of 1 June 2022, Worldwide Machinery v EUIPO – Scaip (SUPERIOR MANUFACTURING), T‑316/21, not published, EU:T:2022:310, paragraph 25 and the case-law cited).
32 However, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 5 June 2024, Habitat Barcelona Unión Constructora v EUIPO – Acomodeo Marketplace (ACOMODEO), T‑365/23, not published, EU:T:2024:361, paragraph 49 and the case-law cited).
33 Furthermore, it is apparent from recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) that the legislature took the view that the protection of an earlier mark was justified only in so far as that trade mark is actually used. In accordance with that recital, Article 57(2) and (3) of that regulation provides that the proprietor of an EU trade mark may request proof that the earlier mark has been put to genuine use in the territory in which it is protected during the period of five years preceding the filing of the application for a declaration of invalidity and for the period of five years preceding the publication of the application for registration of the contested mark.
34 Under Article 15(1)(a) of Regulation No 207/2009 (now Article 18(1)(a) of Regulation 2017/1001), use ‘in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’ is deemed to constitute use of the EU trade mark.
35 The purpose of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001) is to avoid imposing strict conformity between the used form of the trade mark and the form in which the mark was registered and to allow the proprietor of that mark, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect, judgment of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 50).
36 For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited).
37 In addition, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not such as to alter the distinctive character of that trade mark as a whole (see judgment of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 30 and the case-law cited).
38 It is in the light of those considerations that the arguments raised by the applicant in support of the third plea must be examined.
39 As a preliminary point, the Court observes, as does EUIPO, that the applicant does not contest the Board of Appeal’s findings that the evidence submitted by the intervener was sufficient to satisfy the requirements of time, place and extent of use of the earlier mark (see in particular paragraphs 74 to 95 of the contested decision) and to show that that mark had been used for the goods in Classes 18 and 25 (see in particular paragraphs 96 to 99 of the contested decision). Since there is no evidence in the Court’s file to support a finding other than that made by the Board of Appeal as regards the time, place and extent of use and the use as a trade mark, the Board of Appeal’s assessments in relation to those matters must be endorsed.
40 As regards the relevant period of use, it must be noted that, in paragraphs 41 and 42 of the contested decision, the Board of Appeal took into account an initial period from 8 April 2015 to 7 April 2020 and a second period from 4 September 2009 to 3 September 2014.
41 With regard to the calculation of the second relevant period of use, it must be observed that, pursuant to Article 57(2) and (3) of Regulation No 207/2009, the relevant period of use must be calculated starting from the date on which the application for the contested mark was published, and not from the date on which that mark was filed, as would have been the case if Article 64(2) and (3) of Regulation 2017/1001 were applicable. Since the application for the contested mark was published on 17 September 2014, the five-year period referred to in Article 57(2) and (3) of Regulation No 207/2009 therefore extends from 17 September 2009 to 16 September 2014 inclusive, and not from 4 September 2009 to 3 September 2014.
42 Genuine use of the earlier mark therefore had to be demonstrated for the periods from 8 April 2015 to 7 April 2020 and from 17 September 2009 to 16 September 2014.
43 According to the case-law, it is sufficient that a trade mark has been put to genuine use during part of the relevant period of use referred to in Article 57(2) and (3) of Regulation No 207/2009 (see, by analogy, judgment of 24 January 2024, Tiendanimal v EUIPO – Salvana Tiernahrung (SALVAJE), T‑55/23, not published, EU:T:2024:30, paragraph 46 and the case-law cited).
44 Although the Board of Appeal assessed the proof of use during the period of five years preceding the date on which the application for the earlier mark was filed, that is, from 4 September 2009 to 3 September 2014, that same evidence is still relevant to prove the genuine use of that mark during the period of five years preceding the publication of the trade mark application, that is, from 17 September 2009 to 16 September 2014 inclusive, since all that evidence covers the period between 17 September 2009 and 16 September 2014. As is apparent from the information in the Court’s file, the evidence produced by the intervener before EUIPO, for the purpose of demonstrating genuine use of the earlier mark, covers the years 2009 to 2014.
45 Thus, even though the dates for the second relevant period of use are incorrectly stated in the contested decision, that does not call into question the fact that proof of genuine use of the earlier mark has been furnished for the relevant period.
46 As for the applicant’s argument that the proof of use submitted by the intervener concerned the trade mark MICHAEL KORS, without the connected uppercase letters ‘MK’, the Board of Appeal essentially concluded in paragraphs 63 to 73 of the contested decision that use of the earlier mark was demonstrated in forms which did not alter its distinctive character. First of all, in paragraph 7 of the contested decision, the Board of Appeal provided a non-exhaustive list of the evidence submitted by the intervener in response to the request for proof of use. Next, the Board of Appeal took the view, in paragraph 66 of the contested decision, that the words ‘michael kors’, understood as a male forename and surname, were distinctive in relation to all the goods covered by the earlier mark. Thus, the connected uppercase letters ‘MK’, which would be viewed as the abbreviation of that name, were also distinctive, but of somewhat less importance than the full name which they abbreviated and which would be recognised as the commercial origin of the goods concerned. In addition, in paragraph 67 of the contested decision, the Board of Appeal considered, in essence, that, in certain forms of the earlier mark as used, the omission of the uppercase letter combination ‘MK’ did not alter the distinctive character of the earlier mark as registered. Moreover, in other evidence, since the element ‘mk’ is larger and placed above the element ‘michael kors’ with or without a circle, there is no difference that alters the distinctive character of the earlier mark as registered. Finally, the Board of Appeal essentially observed, in paragraph 71 of the contested decision, that the evidence showed other variants of the earlier mark but that, however, the different colours did not alter the distinctive character of the earlier mark as registered.
47 In that regard, it must be borne in mind that the earlier mark, as registered, is a figurative mark. It is apparent from paragraphs 65 and 71 of the contested decision and from the file in the proceedings before EUIPO, which was communicated to the Court, that the proof of genuine use of the earlier mark furnished by the intervener concerns the use of that mark, inter alia, in the following forms:
, , , , , , , MICHAEL KORS, , .
48 Firstly, the Board of Appeal was right to find, in paragraph 66 of the contested decision, that the element ‘michael kors’ of the earlier mark was understood as a male forename and a surname and that it was therefore distinctive in relation to all the goods covered by the earlier mark.
49 Secondly, as for the connected uppercase letters ‘MK’, as the Board of Appeal rightly observed, they will be viewed as the abbreviation of the name Michael Kors. However, they cannot be regarded as being less distinctive than the element ‘michael kors’ (see paragraph 66 of the contested decision). As the Board correctly noted in paragraph 140 of the contested decision, the element ‘MK’ had distinctive character and would attract the attention of the average consumer because of its central position in the overall impression created by the earlier mark.
50 Thirdly, it must be stated that the word elements which make up the earlier mark, that is, ‘mk’, ‘michael’ and ‘kors’, appear with different stylisations (see paragraph 47 above) in most of the evidence produced by the intervener, namely, inter alia, in the catalogues for the goods concerned, on the images of the advertising campaigns, on the outlines of the digital marketing, on the consumer invoices and in the press articles and editorials.
51 In that regard, it must be borne in mind that the essential function of a trade mark is to guarantee the identity of the origin of the goods for which it was registered (see paragraph 27 above). Since the word element ‘mk michael kors’ contained in the stylised trade mark in the forms shown in paragraph 47 above has, on its own, a degree of distinctive character, it must be stated that the earlier mark, as stylised, is in principle capable of fulfilling that essential function.
52 Furthermore, as regards the addition of supplementary elements on some of the evidence produced by the intervener, namely the repetition of the word element ‘michael’, the figurative element with a simple, circular geometric shape and the different colours, the Board of Appeal was right to consider that they did not alter the distinctive character of the earlier mark as registered. The connected uppercase letters ‘MK’ placed alongside, above or below the element ‘michael kors’ will be viewed as the abbreviation of that name, the additional word ‘michael’ is merely a repetition of the male forename already contained in the sign and the difference in size of their elements, their layout and the different colours are not so fanciful that they alter the distinctive character of the sign as it was registered.
53 Fourthly, even assuming that the omission of the element ‘mk’ can alter the distinctive character of the earlier mark, it is sufficient to recall that proof of genuine use of a mark must be established by taking into consideration all of the evidence submitted to the Board of Appeal for assessment (see judgment of 14 June 2023, Stone Brewing v EUIPO – Molson Coors Brewing Company (UK) (STONE BREWING), T‑200/20, not published, EU:T:2023:330, paragraph 66 and the case-law cited). Therefore, as set out in paragraph 50 above, the elements ‘mk’ and ‘michael kors’ of the earlier mark appear in the majority of the evidence produced by the intervener, such that genuine use of the earlier mark can be established.
54 Fifthly, as regards the applicant’s argument that the Board of Appeal refers to the contested mark having regard to the element ‘michael kors’ and not the element ‘mk michael kors’, it must be observed that the applicant misreads the contested decision. It is sufficient to note that, in paragraph 73 of the contested decision, the Board of Appeal concluded that the forms in which the earlier mark had been presented were recognisable and legible as ‘mk michael kors’ and, consequently, that use of the earlier mark in those forms does not alter the mark’s distinctive character and must be taken into consideration when assessing proof of use.
55 Therefore, the Board of Appeal did not make an error of assessment in finding, in paragraph 73 of the contested decision, in essence, that the intervener had furnished sufficient evidence to demonstrate use of the earlier mark in a form which did not alter its distinctive character.
56 It follows from all the foregoing that the third plea in law must be rejected as unfounded.
The fourth plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation
57 In the context of the fourth plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, the applicant submits, in essence, that there is no likelihood of confusion between the contested mark and the earlier mark within the meaning of Article 8(1)(b) of Regulation No 207/2009. In particular, it contests, in essence, the Board of Appeal’s findings concerning the dominant and distinctive elements of the signs concerned, the visual, phonetic and conceptual comparison of those signs and the assessment of the likelihood of confusion.
58 EUIPO, supported by the intervener, contests the applicant’s arguments.
59 In that regard, the Court observes that the fourth plea raised by the applicant is based on a misreading of the contested decision. It must be observed that the Board of Appeal compared the signs concerned as provided for in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation. It did not therefore base the contested decision on Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation. Accordingly, this plea in law is ineffective.
60 However, in so far as the applicant’s arguments are to be understood as seeking to criticise the Board of Appeal’s assessment concerning the dominant and distinctive elements of the signs concerned and their visual, phonetic and conceptual similarity, it is appropriate to examine that line of argument in the context of assessing the similarity of the signs concerned within the meaning of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation (see paragraphs 83 to 120 below).
61 It follows that the applicant’s fourth plea in law must be rejected as ineffective.
The fifth plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation
62 In the context of the fifth plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation, the applicant contests, in essence, the Board of Appeal’s findings concerning, first, the reputation of the earlier mark and, second, the comparison between the signs concerned.
63 EUIPO and the intervener contest the applicant’s arguments.
64 Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) thereof, at the request of the proprietor of an earlier mark, within the meaning of Article 8(2) of that regulation (now Article 8(2) of Regulation 2017/1001), an EU trade mark is also to be declared invalid where it is identical with, or similar to, the earlier mark and is to be registered for goods or services which are not similar to those for which the earlier mark is registered, 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 contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
65 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier mark which allegedly has a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, the earlier mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the contested mark must lead to a risk that unfair advantage might be taken of the distinctive character or the repute of the earlier mark or that it might be detrimental to the distinctive character or the repute of the earlier mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).
66 As regards, more particularly, the fourth of the conditions for application of Article 8(5) of Regulation No 207/2009, it covers three distinct and alternative types of risk, namely that the use without due cause of the contested mark, firstly, is detrimental to the distinctive character of the earlier mark, secondly, is detrimental to the repute of the earlier mark or, thirdly, takes unfair advantage of the distinctive character or the repute of the earlier mark. The first type of risk covered by that provision is established where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. It refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk covered is made out where the goods or services covered by the contested mark may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk covered is that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the contested mark, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It must, however, be observed that in none of those cases is the existence of a likelihood of confusion between the marks at issue required, since the relevant public simply has to be able to establish a link between them without necessarily having to confuse them (see, to that effect, judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
The relevant public
67 In paragraphs 105 to 108 of the contested decision, the Board of Appeal found that the goods in Classes 18 and 25, covered by the marks concerned, were directed at the general public composed of average consumers paying an average degree of attention. Furthermore, in paragraph 113 of the contested decision, it concluded that the relevant territory was that of the entire European Union.
68 Those assessments, which – moreover – are not contested by the applicant, are not erroneous and must therefore be approved.
The reputation of the earlier mark
69 The applicant submits, in essence, that the earlier mark does not have a reputation. In particular, it claims that the proof of repute relates to the element ‘michael kors’ and not to the element ‘mk michael kors’, or to the element ‘mk’ in isolation. Thus, the distinctive character of the earlier mark is altered in that evidence.
70 EUIPO, supported by the intervener, contends that the applicant’s arguments should be rejected.
71 In paragraphs 109 to 127 of the contested decision, the Board of Appeal concluded that the earlier mark enjoyed a strong level of reputation among the general public and was known as an iconic and luxury brand. That finding by the Board of Appeal was based, as is apparent from paragraphs 115 to 123 of the contested decision, on all the evidence produced by the intervener relating to various EU countries, inter alia, Italy, France, Germany, Spain, the Netherlands, Luxembourg and Belgium.
72 Specifically, first, the Board of Appeal noted that the intervener had provided data concerning the sales of the goods concerned in the various countries of the European Union over periods from 2010 to 2018. Second, it found that the public had been heavily exposed to the earlier mark by advertising campaigns in major magazines and weekly publications and on social media. Third, it considered that the earlier mark was regarded as being one of the top 100 brands for millennials and one of the best-known brands in the field of fashion and luxury goods on a worldwide basis. Fourth, it observed, in essence, that the elements of the earlier mark were visible on store fronts, such as those in the UK and Spain, in which the goods covered by the earlier mark were displayed. Furthermore, in paragraph 124 of the contested decision, the Board of Appeal took the view, in essence, that, in almost all the evidence, the element ‘michael kors’ was used together with goods covered by the earlier mark, and therefore a link could be established between the name Michael Kors and the abbreviation ‘mk’ in those cases in which the earlier sign could be perceived ‘separately’ in those goods.
73 According to the case-law, in order to satisfy the requirement of reputation, a mark must be known to a significant part of the public concerned by the goods covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, namely, in particular, the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. There is, however, no requirement for that mark to be known by a given percentage of the public thus defined or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM – Staccata (QUARTODIMIGLIO QM), T‑76/13, not published, EU:T:2015:94, paragraph 87 and the case-law cited).
74 The reputation of an earlier mark must be established as at the filing date of the application for the contested mark (see judgment of 16 October 2018, VF International v EUIPO – Virmani (ANOKHI), T‑548/17, not published, EU:T:2018:686, paragraph 103 and the case-law cited). Documents bearing a date after that date cannot however be deprived of evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (see judgment of 16 December 2010, Rubinstein v OHIM – Allergan (BOTOLIST), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 52 and the case-law cited).
75 In the present case, the reputation of the earlier mark had to be established, as the Board of Appeal observed, on 4 September 2014, the date on which the application for registration of the contested mark was filed.
76 It must be observed that, in order to find the reputation of the earlier mark to be established, the Board of Appeal relied on the evidence listed in paragraph 7 of the contested decision. That evidence includes, inter alia, catalogues, advertising campaigns, press coverage, broadcasts of runway shows and events, billboards, intensive promotions on social media, promotions in major magazines, including in Vogue, Elle, Glamour, InStyle, Marie Claire, and Tatler Vogue, press articles, inter alia, in the Daily Mail, data relating to substantial sales, invoices and major marketing campaigns in various EU countries, in particular in France, Italy, Spain, Germany and the Netherlands, which featured the earlier mark.
77 That evidence dates from the period between 2009 and 2018 and contains useful information about the existence of a reputation on the relevant date. It allows conclusions to be drawn about the knowledge of a significant part of the public concerned of the earlier mark in connection with the goods covered by that mark.
78 Thus, it is apparent from EUIPO’s file that that evidence produced by the intervener, taken as a whole, convincingly demonstrates that, as at the relevant date, the earlier mark was widely known by the public concerned, within the European Union, on account of its well-documented, intensive and long-standing use in connection with ‘carrying cases, bags, luggage, handbags, purses, wallets’ in Class 18 and ‘clothing, footwear; belts’ in Class 25, for which, inter alia, the earlier mark was registered.
79 The Board of Appeal was therefore right to find, in paragraph 127 of the contested decision, that the earlier mark enjoyed a strong level of reputation among the general public, and was known as an iconic and luxury brand.
80 That finding cannot be called into question by the applicant’s argument that the reputation was not demonstrated for the earlier mark as registered.
81 In that regard, since the principles recalled in paragraphs 33 to 36 above apply, mutatis mutandis, where proof of the reputation of a trade mark, within the meaning of Article 8(5) of Regulation No 207/2009, relates to shapes which differ in elements that do not alter the distinctive character of that mark in the form in which it was registered (see, by analogy, judgment of 9 September 2020, Novomatic v EUIPO – Brouwerij Haacht (PRIMUS), T‑669/19, not published, EU:T:2020:408, paragraph 31), it must be observed that most of the evidence produced by the intervener concerns the use of the earlier mark in a form which does not alter that mark’s distinctive character (see paragraphs 50 to 54 above), and therefore a reputation was indeed associated with the mark.
82 Accordingly, the Board of Appeal did not make an error of assessment in finding that, taken as a whole, the evidence produced by the intervener was sufficient to demonstrate, as at the relevant date, that the earlier mark had a strong level of reputation within the European Union for the goods in Classes 18 and 25.
The comparison of the signs concerned
83 In so far as it follows from paragraphs 57 and 60 above that the applicant’s arguments are to be understood as intending to criticise the Board of Appeal’s assessment concerning the dominant and distinctive elements of the signs concerned and their visual, phonetic and conceptual similarity within the meaning of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation, those arguments must now be examined.
84 EUIPO, supported by the intervener, contests the applicant’s arguments.
85 As a preliminary point, it must be borne in mind that the existence of a similarity between an earlier mark and a contested mark is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation No 207/2009. That condition requires the existence, in particular, of elements of visual, phonetic or conceptual similarity (see, to that effect, judgment of 6 July 2022, ALO jewelry CZ v EUIPO – Cartier International (ALOve), T‑288/21, not published, EU:T:2022:420, paragraph 39 and the case-law cited).
86 However, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) of Regulation No 207/2009 may be the consequence of a lesser degree of similarity between the earlier and contested marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) of Regulation No 207/2009 or under Article 8(5) thereof (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 54).
87 It follows that, in relation to the visual, phonetic and conceptual similarities, the comparison of the signs at issue must be based on the overall impression produced by the signs, taking account, inter alia, of their distinctive and dominant elements (see judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 32 and the case-law cited).
88 In the present case, on the one hand, it must be observed that the earlier mark consisted of the connected uppercase letters ‘MK’ written in a simple, bold and black-coloured font and positioned above the word element ‘michael kors’ written in uppercase in a standard, bold and black-coloured font. On the other hand, the contested mark consisted of the connected uppercase letters ‘MK’ written in a bold and white-coloured font on a black circular background with a black frame, in the lower part of which the word element ‘michael michele’ appeared written in uppercase in a standard, white-coloured font.
– The distinctive and dominant elements of the marks at issue
89 The applicant argues, in essence, that, since the forename Michael is widespread, the distinctive elements of the marks at issue are the surnames, namely Kors in the case of the earlier mark and Michele in that of the contested mark.
90 EUIPO, supported by the intervener, contests the applicant’s arguments.
91 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (see, to that effect, judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited).
92 When assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (see judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 35 and the case-law cited).
93 In the present case, on the one hand, the Board of Appeal took the view that, in view of the fact that the element ‘michael kors’ of the earlier mark referred to the name of a well-known fashion designer and therefore the connected uppercase letters ‘MK’ would be associated with that name by the relevant public, those elements were distinctive. It considered that, given its central and top position in the overall impression created by the earlier mark or its meaning as initials of the fashion designer, the element ‘mk’ was co-dominant, visually attractive and eye-catching. On the other hand, it found that the element ‘michael michele’ of the contested mark referred to a male forename, whereas the uppercase letters ‘M’ and ‘K’ would not be understood as a reference to the words ‘michael’ and ‘michele’ and therefore had no meaning for the relevant public. It also took the view, in essence, that, given its size and its position in relation to the other elements of the contested mark, the element ‘mk’ in that mark was more eye-catching than the word element ‘michael michele’, and that the figurative element of the contested mark in the shape of geometric circles was in a secondary position.
94 As for the element common to the marks at issue, ‘mk’, the Court notes that the applicant does not contest the Board of Appeal’s findings that that element was distinctive to an average degree and was co-dominant, in the case of the earlier mark, and visually attractive and eye-catching, in the case of the contested mark, on account of its central and top position in the overall impression created. Those assessments are not vitiated by errors of assessment.
95 With regard to the applicant’s argument that the dominant elements of the marks at issue are the element ‘kors’ of the earlier mark and the element ‘michele’ of the contested mark, it is sufficient to recall that, in a composite mark, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname (see, to that effect, order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraphs 44 and 45 and the case-law cited).
96 Since the applicant has not produced any specific evidence relating to the perception of the public in the European Union as a whole, there is no reason to consider that the elements ‘kors’ in the earlier mark and ‘michele’ in the contested mark would be perceived as a surname with a more distinctive character.
97 Furthermore, as regards the figurative element of the contested mark, it must be concluded, as did the Board of Appeal, that the relevant public will perceive that element, in the shape of geometric circles, as decorative and lacking any distinctive character. The Board of Appeal was therefore right to find that the figurative element of the contested mark had a secondary impact in the comparison of the signs.
98 Therefore, first, the Board of Appeal rightly found, in essence, that the elements ‘mk’ and ‘michael kors’ of the earlier mark were distinctive to an average degree and that the element ‘mk’ of the contested mark had no meaning for the relevant public, whereas the element ‘michael michele’ referred to a male forename. Second, it correctly concluded that, given its size and its position, the element common to the marks at issue, ‘mk’, was more eye-catching in the case of the contested mark and co-dominant in that of the earlier mark, despite the existence of other non-negligible word elements.
– The visual comparison
99 The applicant argues that, visually, the marks at issue, taken as a whole, are different. It criticises the Board of Appeal for not finding that the contested mark included recognisable visual elements which were not secondary and not descriptive or lacking distinctiveness. It submits that the earlier mark does not have a distinctive logo. It also argues that the visual aspect of the marks at issue must be taken into account given the visual significance of the field in which those marks are used, namely the fashion industry. Furthermore, in its view, contrary to the Board of Appeal’s finding, the element ‘michael michele’ of the contested mark is clear and visible.
100 EUIPO contests the applicant’s arguments.
101 In the present case, the Board of Appeal concluded, in paragraph 143 of the contested decision, that the signs concerned had a similar structure and overall composition, in which the connected uppercase letters ‘MK’ were eye-catching or co-dominant. It also took the view, in essence, that the signs differed by virtue of the element ‘kors’ in the earlier mark and the element ‘michele’ in the contested mark, which were in a secondary position, and the colours of the background of the circles of the contested mark. Thus, the Board of Appeal found that, despite their differences, there was an average degree of visual similarity between the signs concerned.
102 In that regard, it must be observed, as did the Board of Appeal, that, given the size and the central position of the connected uppercase letters ‘MK’, written in a simple font, and the initial position of the other common element ‘michael’ written in an almost identical font, the two signs concerned had a similar overall structure.
103 As is apparent from paragraph 98 above, the element ‘mk’ is also, contrary to what the applicant claims, an eye-catching element of the signs concerned. According to the case-law, where the dominant element of the earlier mark is entirely included within the contested mark, as is the case here, there is a certain degree of visual similarity between the signs concerned (see, to that effect, judgment of 19 April 2016, 100% Capri Italia v EUIPO – IN.PRO.DI (100% Capri), T‑198/14, not published, EU:T:2016:222, paragraph 99).
104 Although there are differences between the signs concerned, the fact remains that those differences do not allow the conclusion to be drawn that those signs are different, as the applicant claims. First, since it is decorative, the figurative element of the contested mark has, as the Board of Appeal rightly observed, a secondary impact in the perception of the relevant public. Second, although the elements ‘kors’ of the earlier mark and ‘michele’ of the contested mark are not negligible, their differences are secondary, given the secondary position and the size of those elements, and, therefore, they are incapable of differentiating between the signs concerned.
105 In those circumstances, it must be concluded that the Board of Appeal was right to consider that the degree of visual similarity was average.
– The phonetic comparison
106 According to the applicant, the marks concerned have a different overall structure which results in differences in their pronunciation, since consumers would read the earlier mark as ‘michael kors’ without the abbreviation, whereas they would read the contested mark as ‘mk michael michele’.
107 EUIPO endorses the Board of Appeal’s assessments.
108 In the present case, the Board of Appeal took the view, in paragraph 144 of the contested decision, that, since the signs concerned contained the elements ‘mk’ and ‘michael’, there were substantial similarities in their pronunciation despite the differences brought about by the element ‘kors’ of the earlier mark and the element ‘michele’ of the contested mark. It observed that the average consumer would tend to abbreviate orally a mark comprising a number of elements in order to make it easier to pronounce than long signs, and that consumers take more note of the beginning or the top of a sign. For that reason, it found that, given their secondary positions and smaller sizes, the elements ‘michael kors’ of the earlier mark and ‘michael michele’ of the contested mark would be omitted when the marks concerned are pronounced, and therefore the marks would be referred to by the element ‘mk’. Thus, it found that the signs concerned were similar phonetically to an average degree.
109 It must be considered, as did the Board of Appeal, that, notwithstanding the fact that the elements ‘michael kors’ of the earlier mark and ‘michael michele’ of the contested mark are different, there are similarities in the pronunciation of the signs given that, in both signs, the word element ‘mk’ is placed in the centre of the signs, whereas the divergent word elements are placed below (see, to that effect and by analogy, order of 21 December 2022, Suicha v EUIPO – Michael Kors (Switzerland) International (MK MARKTOMI MARKTOMI), T‑264/22, not published, EU:T:2022:861, paragraph 55).
110 As is rightly observed in the contested decision, the average consumer will tend, first, to abbreviate orally a mark comprising a number of terms in order to make it easier to pronounce and, second, generally to take more note of the beginning of a sign than of its end (see judgment of 24 February 2016, Tayto Group v OHIM – MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 76 and the case-law cited). Consumers tend to omit certain word elements of a mark when pronouncing that mark, in particular, in order simply to economise on words, if those elements are easily separable (see judgment of 6 October 2017, Kofola ČeskoSlovensko v EUIPO – Mionetto (UGO), T‑176/16, not published, EU:T:2017:704, paragraph 62 and the case-law cited).
111 In the present case, first, it must be observed that the relevant public will pronounce the elements common to the signs, ‘mk’ and ‘michael’, in the same way. Second, the sole difference between the elements ‘kors’ of the earlier mark and ‘michele’ of the contested mark is not sufficient to find there to be no phonetic similarity between the signs concerned.
112 The Board of Appeal was therefore right to consider that the signs concerned were phonetically similar to an average degree.
– The conceptual comparison
113 The applicant is of the view that the marks concerned are conceptually different because they identify different people. According to the applicant, those semantic differences counteract the similarities which may exist verbally or overall.
114 EUIPO endorses the Board of Appeal’s assessments.
115 In the present case, the Board of Appeal concluded, in paragraph 145 of the contested decision, that the signs concerned were conceptually similar to an average degree since they both referred to ‘michael’.
116 The Court finds that the element common to the signs, ‘michael’, will be identified by the relevant public as a forename, the element ‘kors’ of the contested mark as a surname and the element ‘michele’ as either a surname or a variant of the forename Michael. Such meanings make a conceptual comparison possible (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 86 (not published)).
117 It must be noted that there is a certain degree of conceptual similarity between the signs concerned, because they both contain the male forename Michael (see, to that effect, judgment of 3 June 2015, GIOVANNI GALLI, T‑559/13, EU:T:2015:353, paragraph 88 (not published) and the case-law cited).
118 Thus, the Board of Appeal was right to find, in paragraph 145 of the contested decision, that the signs were conceptually similar to an average degree.
119 Furthermore, to reject the applicant’s argument that the counteraction theory applies in the present case and therefore the verbal or overall similarities are counteracted by the conceptual differences which are easily and readily recognisable by the relevant public, it must be recalled that, according to settled case-law, the conceptual differences between two signs concerned may counteract their visual and phonetic similarities, provided that at least one of those signs has a clear and specific meaning for the relevant public, with the result that that public is capable of grasping it immediately (see judgment of 5 October 2017, Wolf Oil v EUIPO, C‑437/16 P, not published, EU:C:2017:737, paragraph 43 and the case-law cited). In the present case, and as follows from the previous paragraph, it must be observed that the signs were conceptually similar to an average degree, and that the counteraction theory must therefore not be applied.
120 It follows from all the foregoing that the marks concerned were visually, phonetically and conceptually similar to an average degree.
The link between the marks concerned
121 The Board of Appeal took the view, in paragraphs 147 to 154 of the contested decision, that the relevant public would be reasonably able to establish a mental association between the earlier mark and the contested mark. In particular, first of all, it observed that the earlier mark had a reputation for the ‘carrying cases, bags, luggage, handbags, purses, wallets’ in Class 18 and the ‘clothing, footwear; belts’ in Class 25. Next, it took the view that the signs, despite their differences, were visually and phonetically similar to an average degree. With regard to the goods covered by the marks concerned that were directed at the general public, the Board of Appeal observed that they were in part identical and in part closely related to each other since they belong to the same, and closely related, markets in the fashion industry. The Board of Appeal therefore found, in essence, that the identical visual structure, the conceptual similarity, the closeness between the goods concerned and the reputation enjoyed by the earlier mark for the goods in Classes 18 and 25 were sufficient elements to create a link between the marks concerned in the mind of the relevant public.
122 Those assessments made by the Board of Appeal, which are not – moreover – contested by the applicant, must be endorsed.
The unfair advantage taken and the lack of due cause
123 The Board of Appeal found, in paragraphs 155 to 163 of the contested decision, that the intervener’s statements were sufficient to prove that the applicant was indeed seeking to ride on the coat-tails of the reputed trade mark in order to benefit from the power of attraction and to exploit, without paying any financial compensation, the marketing effort expended by the intervener in order to create and maintain the earlier mark’s image. Thus, the Board of Appeal concluded, in paragraph 162 of the contested decision, that the applicant’s use of the goods in Classes 18 and 25 took unfair advantage of the reputation of the earlier mark for the ‘carrying cases, bags, luggage, handbags, purses, wallets’ in Class 18 and the ‘clothing, footwear; belts’ in Class 25. In addition, in paragraph 165 of the contested decision, the Board of Appeal noted that the applicant had neither claimed nor proven a due cause which would allow it to use a trade mark which infringes a reputed trade mark.
124 Those findings made by the Board of Appeal, which – moreover – are not contested by the applicant, must be approved.
125 In those circumstances, the Board of Appeal did not make an error of assessment when it took the view, in paragraph 166 of the contested decision, that the application for a declaration of invalidity was well founded for the purpose of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation.
126 The applicant’s fifth plea in law must therefore be rejected as unfounded.
The second plea in law, alleging infringement of Article 52(1) of Regulation No 207/2009
127 In the context of the second plea in law, alleging infringement of Article 52(1) of Regulation No 207/2009, the applicant submits, in essence, that the intervener has not demonstrated bad faith at the time the contested mark was filed. It adds that the intervener has not proven that the applicant knew of the existence and use of a similar trade mark or that the applicant’s intention was to harm the intervener or take advantage of the intervener’s image. Furthermore, according to the applicant, consumers are able to differentiate between the marks concerned quickly and simply.
128 EUIPO, supported by the intervener, contests the applicant’s arguments.
129 In the present case, it is apparent from paragraphs 166 to 168 of the contested decision that the Board of Appeal allowed the application for a declaration of invalidity only in so far as that application was based on Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation. It did not examine the other grounds for invalidity and earlier rights invoked by the intervener. However, it is not for the Court to rule on an issue which was not examined by the Board of Appeal (see, to that effect, judgment of 26 January 2022, Diego v EUIPO – Forbo Financial Services (WOOD STEP LAMINATE FLOORING), T‑498/20, not published, EU:T:2022:26, paragraph 21 and the case-law cited).
130 The plea in law alleging infringement of Article 52(1) of Regulation No 207/2009 must therefore be rejected.
131 In the light of all the foregoing considerations, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.
Costs
132 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.
133 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is scheduled, EUIPO must be ordered to bear its own costs, since no hearing has been arranged.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Tecom Master, SL to bear its own costs and to pay those incurred by Michael Kors (Switzerland) International GmbH;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira | Kancheva | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 22 January 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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