You-Q v OHMI - Apple Corps (BEATLE) (Community trade mark) [2012] EUECJ T-369/10 (29 March 2012)

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(Community trade mark - Opposition proceedings - Application for Community figurative mark BEATLE - Earlier national and Community word and figurative marks BEATLES and THE BEATLES - Relative ground for refusal - Article 8(5) of Regulation (EC) No 207/2009 - Reputation - Unfair advantage taken of the distinctive character or reputation of the earlier marks)

1 On 27 January 2004, Handicare Holding BV ('Handicare'), formerly Movingpeople.net International BV, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark in respect of which registration was applied for is the following figurative sign:

3 The goods in respect of which registration was applied for are inter alia in Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: 'Vehicles; apparatus for locomotion by land, air or water, in particular scooters, bicycles, motorcycles and wheelchairs, specially made for sick and disabled persons and other persons requiring assistance; parts and fittings for all the aforesaid goods, included in this class, in particular belts, harnesses, chairs and supports (cushions), safety systems for wheelchair occupants and systems for locking wheelchairs, including control apparatus'.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 6/2005 of 7 February 2005.

5 On 6 May 2005, the intervener, Apple Corps Ltd, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of those goods.

6 On 30 August 2005, Handicare requested that the list of goods in the application for a trade mark be restricted so that from then on it included: 'Wheelchairs electric, wheelchairs not-electric, wheelchairs hand-operated, specially made for disabled and or persons requiring assistance; scooters, scootermobiles, minicruisers, specially made for sick and disabled persons and other persons requiring assistance; parts and fittings for all the aforesaid goods, included in this class, in particular belts, harnesses, chairs and supports (cushions), safety systems for wheelchair occupants and systems for locking wheelchairs, including control apparatus; all the aforesaid goods specially made for disabled persons and other persons requiring assistance not included in other classes'.

7 The opposition, which was maintained against the list of goods mentioned in paragraph 6 above, was based on various earlier marks, including the word mark BEATLES and the following figurative mark:

8 That opposition was also based on the following series of earlier figurative marks:

9 Those earlier marks included Community marks and national marks as well as an earlier well-known mark, an earlier non-registered mark and an earlier mark used in the course of trade.

10 The opposition was based on all the goods and services covered by the earlier marks.

- Class 6: 'Articles of common metal and their alloys not included in other classes; ironmongery; small items of metal hardware; buckles of common metal; key fobs and key rings of common metal; key chains of metal; ornaments, statuettes and figurines, all of common metal; decorative wall hangings of common metal; decorative and commemorative plaques and plates of non-precious metal; signboards of metal; metal containers';

- Class 9: 'Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus; sound records, video records, cinematographic films, photographic films; computer software; computer games software; video game software; interactive entertainment software; cartridges and discs for use with electronic games apparatus; games and apparatus for games for use with a television screen, video monitor or electronic display apparatus; amusement apparatus for use with a television screen, video monitor or electronic display apparatus; coin or token operated electrical or electronic amusement apparatus; interactive compact discs; CD-ROMs; encoded telephone cards; sunglasses; magnets; photographic transparencies; frames for photographic transparencies; computer generated images; telephone apparatus; radios; cases adapted for storing cassettes, discs, cartridges and cards for use in bearing sound records, video records, computer software or video games; racks adapted to hold cassettes, discs, cartridges and cards for use in bearing sound records, video records, computer software or video games; electrical and electronic apparatus for generating, processing and reproducing images; mouse pads and wrist pads, all being accessories for keyboards';

- Class 14: 'Articles of precious metal and their alloys, and articles coated with precious metal and their alloys, not included in other classes; jewellery, precious stones; horological and chronometric instruments; money clips, belt buckles, coasters, serving trays, jewellery boxes, key rings and key chains, all of precious metal or coated with precious metal; cuff links, brooches, bracelets, bangles, earrings, pendants, medallions, trinkets, charms, rings, watch straps, tie pins, jewellery pins, tie clips, coins; ornaments, statuettes and figurines of precious metal or precious stone, or coated therewith; plates of precious metal or coated therewith; watches and clocks';

- Class 16: 'Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding materials; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic material for packaging (not included in other classes); playing cards; printers' type; printing blocks; posters; books; cards; postcards; greetings cards; calendars; photograph frames; photograph albums; prints; gift bags; gift boxes; note pads; adhesive backed paper for stationery purposes; pens, pencils and crayons; stationery pins and tacks; diaries; cheques; cheque books; cheque book covers; money clips (not of precious metal); coasters of card or paper; gift tags and luggage tags of paper and cardboard; ornaments of paper, card and papier mache; stickers; transfers (decalcomanias); ring binders; folders; personal organisers; covers for books and personal organisers; terrariums';

- Class 18: 'Goods made from leather and imitation leather; small leather goods; articles of luggage; bags; trunks and travelling bags; rucksacks, back packs, purses, wallets, billfolds; key fobs, key cases, luggage tags and coasters, all of leather or imitation leather; umbrellas';

- Class 20: 'Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all of these materials, or of plastics; cushions, pillows; decorative articles made of plaster, plastics, wood, wax or resin; ornaments, statuettes and figurines; decorative wall plaques (furniture) not of textile; storage racks (furniture); key rings and key fobs; jewellery boxes; signboards of wood or plastics';

- Class 21: 'Household or kitchen utensils and containers; small domestic utensils and containers; combs and sponges; brushes (except paint brushes); glassware, porcelain and earthenware not included in other classes; ornaments, statuettes and figurines of ceramic, china, crystal, glass, earthenware and porcelain; plates; ornamental plates; wall plaques (not being furniture); drinking vessels; mugs; jugs; tankards; steins; bottles and insulated bottles; jars; bell jars; coasters other than of paper or of table linen; serving trays; indoor terrariums';

- Class 24: 'Textiles and textile goods, not included in other classes; household linen; table linen; bed and table covers; table mats (not of paper); table napkins; coasters of table linen or of textile; loose furniture coverings; throws; sheets, pillow cases, duvet covers; towels; wall hangings of textile; handkerchiefs';

- Class 25: 'Clothing, footwear and headgear; shirts, polo shirts, T-shirts, sweatshirts, jackets, coats, pullovers, vests, articles of underclothing, shorts, boxer shorts, scarves, silk squares, neck-ties, caps, braces, suspenders, belts, socks';

- Class 26: 'Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; buckles (clothing accessories), belt buckles and belt clasps; badges for wear and brooches, not of precious metal; decorative pins for wear (other than jewellery); heat adhesive patches for decorating textile articles; hair ornaments; hat ornaments; pin cushions';

- Class 27: 'Mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)';

- Class 28: 'Toys, games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; Christmas crackers (bonbons); dolls; toy and novelty face masks; novelties in the form of souvenirs; toy musical boxes; snow glass balls; computer games apparatus, electronic games apparatus and video games apparatus, not included in other classes; toy musical instruments';

- Class 41: 'Entertainment; education; entertainment and education relating to music; entertainment and education by means of television and radio; production, presentation, exhibition and rental of radio and television programmes; production, presentation, distribution, exhibition and rental of motion pictures, films, sound recordings, video recordings, interactive compact discs, CD-ROMs and games cartridges for use with electronic games apparatus; amusement arcade services; amusement park services; organisation of competitions; organisation, production and presentation of shows and live performances; concert services; orchestra services; live band performances; discothèque services; club entertainment services; night club services; organisation of exhibitions for cultural, entertainment and educational purposes; organisation of musical events; organisation of sporting events; reservation of tickets for entertainment, sports events and exhibitions; motion picture studio services; television studio services; recording studio services; provision and rental of recording studio, television studio and motion picture studio apparatus and facilities; provision of cinema and theatre facilities; film, sound and video recording modifying and editing services; publishing; publication of printed matter, books and periodical publications; publication and provision of entertainment for access by computer; publication of multimedia recordings, interactive compact discs and CD-ROMs; theatrical agency services; management and agency services for performing artists; provision of information relating to any of the aforesaid services'.

- Class 27: 'Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)';

12 The exact specifications of the goods in Class 9 covered by the earlier marks on which the opposition is based are as follows:

13 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009), Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009) and Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009).

14 By decision of 25 August 2009, the Opposition Division rejected the opposition and ordered the intervener to pay the costs. First, it found that in respect of the ground set out in Article 8(1)(b) of Regulation No 207/2009, the goods covered by the mark applied for are goods specially made for disabled persons and other persons requiring assistance not included in other classes and they are different from the goods or services covered by the earlier marks. The Opposition Division therefore concluded that one of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was lacking. Second, the Opposition Division rejected the opposition inasmuch as it was based on Article 8(4) of that regulation on the ground that, in essence, the intervener had failed to identify the earlier national law allegedly enabling it to prohibit the use of the mark applied for, but merely mentioned certain rights and, furthermore, that the goods and services in question were dissimilar. Third, the Opposition Division rejected the opposition inasmuch as it was based on Article 8(5) of Regulation No 207/2009 on the ground that, as the services and goods were dissimilar, the intervener should have proved why the public would still perceive a link between the signs at issue.

15 On 26 October 2009, the intervener filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.

16 By decision of 31 May 2010 ('the contested decision'), the Second Board of Appeal of OHIM annulled the decision of the Opposition Division. It examined the appeal from the point of view of the alleged infringement of Article 8(5) of Regulation No 207/2009 and upheld the appeal without examining the pleas in law based on the infringement of Article 8(1)(b) and Article 8(4) of Regulation No 207/2009.

17 The Board of Appeal found that, in essence, the mark THE BEATLES or BEATLES is very famous for sound records, video records and films and that the mark is highly distinctive both per se and by virtue of its extensive use in respect of those goods. The Board of Appeal found that the signs at issue are highly similar in visual, phonetic and conceptual terms. It added that although the goods are dissimilar, the relevant public overlaps. The Board of Appeal found that the earlier marks enjoy an enormous reputation for 'sound records, video records, films' as well as a substantial reputation for merchandising products such as games and toys. The Board of Appeal therefore considered that while the respective goods are different, it is not altogether inconceivable that an association could be made between the two signs at issue on the part of the relevant public since fans of the Beatles are precisely the sort of people targeted by Handicare's goods and that the appeal of an image transfer from the earlier marks to the mark applied for is plain to see.

18 Lastly, the Board of Appeal found, after recalling the requirements laid down in Article 8(5) of Regulation No 207/2009 as regards detriment to the distinctive character of the earlier mark (dilution); detriment to the repute of the earlier mark (tarnishment) and the taking of unfair advantage of the distinctive character or the repute of the earlier mark (free-riding), that, on account of the proximity between the signs at issue, the considerable and long-standing reputation of the earlier marks and the overlap of the relevant public, it is likely that, by using the mark applied for, Handicare would take unfair advantage of the repute and the consistent selling power of the earlier mark(s).

19 The Board of Appeal therefore concluded that there is a serious risk that detriment to the earlier marks would occur, and that it was not necessary for the intervener to provide any further proof on the matter. Furthermore, according to the Board of Appeal, Handicare failed to prove due cause of use of the mark applied for. As regards the argument of Handicare that the mark applied for is inspired by the reputation of the Beetle model of Volkswagen, the Board of Appeal found that the spelling of the mark applied for is so close to the spelling of the earlier marks as to make it difficult to give credit to that argument.

22 The applicant puts forward two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, second, infringement of Article 8(5) of that regulation.

23 It is appropriate to consider, first, the plea alleging infringement of Article 8(5) of Regulation No 207/2009.

24 The applicant, whilst acknowledging the reputation of the earlier marks, submits, in essence, that proof of enormous or very substantial reputation of those marks with regard to sound and video recordings and films, and a substantial reputation for the merchandising mentioned in the contested decision has not been adduced. Moreover, the applicant claims that the signs at issue are not identical, that the goods and services in question are dissimilar, that the earlier marks are devoid of any distinctiveness and that there is no likelihood of confusion on the part of the public. The applicant concludes from all the foregoing that there is no evidence that the mark applied for would be detrimental to the distinctive character or repute of the earlier marks or would take unfair advantage of the distinctive character or repute of the earlier marks.

25 According to the case-law, it is apparent from Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: first, that the earlier mark cited in opposition has a reputation; secondly, that the marks at issue are identical or similar; and, thirdly, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render the provision inapplicable (see, to that effect, Case T-67/04 Spa Monopole v OHIM - Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II-1825, paragraph 30, and Case T-215/03 Sigla v OHIM - Elleni Holding (VIPS) [2007] ECR II-711, paragraph 34).

26 In order better to define the risk referred to by Article 8(5) of Regulation No 207/2009, it must be pointed out that the primary function of a mark is that of an 'indication of origin' (recital 8 in the preamble to Regulation No 207/2009). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure, youth. To that effect the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (VIPS, paragraph 25 above, paragraph 35).

27 According to the case-law, in order to satisfy the requirement of reputation, the earlier Community trade mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (Case C-375/97 General Motors [1999] ECR I-5421, paragraph 31; SPA-FINDERS, paragraph 25 above, paragraph 34).

28 In examining this condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (General Motors, paragraph 27 above, paragraph 27; judgment of 10 May 2007 in Case T-47/06 Antartica v OHIM - Nasdaq Stock Market (nasdaq), not published in the ECR, paragraph 46, upheld, on appeal, by the judgment of 12 March 2009 in Case C-320/07 P Antartica v OHIM, not published in the ECR).

29 The Board of Appeal found, on the basis of the evidence mentioned in paragraph 16 of the contested decision, that the earlier mark THE BEATLES or BEATLES (whether stylised or not) is very famous for 'sound records, video records, films' and that, as regards BEATLES merchandising products such as toys and games, the reputation of the earlier marks is at least substantial.

30 The applicant submits that, in the perception of consumers of sound and video recordings, films and some merchandising products for which the earlier trade marks are registered, the earlier trade marks have a reputation, but denies that, in the perception of the relevant public, the earlier marks enjoy an enormous or very substantial reputation with regard to sound and video recordings and films, and a substantial reputation for the merchandising mentioned in the contested decision.

31 The applicant claims, in particular, that the Board of Appeal, first, failed to forward to it all the documents that the Board received from the intervener, second, failed to define the public whose perception had to be taken into consideration when assessing the distinctive character and reputation of the earlier marks, which ought to have been examined in the light of the public of the mark applied for, and, thirdly, wrongly found that the earlier marks have an enormous reputation.

32 First, as regards the applicant's assertion that not all the evidence produced by the intervener in the administrative procedure was forwarded to the applicant, the Court would point out that, when asked a question to this effect by the Court at the hearing, the applicant acknowledged that it had received all the documents, formal note of which was made in the minutes of the hearing.

33 Second, with respect to the determination of the public by reference to whom the reputation had to be established, it should be borne in mind that the reputation of a trade mark must be assessed in relation to the relevant section of the public as regards the goods or services for which that mark was registered. That may be either the public at large or a more specialised public (General Motors, paragraph 27 above, paragraph 24, and Case C-252/07 Intel Corporation [2008] ECR I-8823, paragraph 47).

34 In that regard, the Board of Appeal stated, in paragraph 19 of the contested decision, that the relevant public in relation to whom the earlier marks have a reputation consists of the 'public at large', and no criticism can therefore be levelled against the contested decision.

35 The existence of reputation must be established by reference to the public concerned by the earlier marks, namely the public at large, and not, contrary to the applicant's assertion, by reference to the public concerned by the mark applied for, namely a specialist public, even if, in the circumstances of this case, as OHIM rightly stated at the hearing, those two sections of the public overlap, since the public at large also encompasses the specialist public. However, it should be borne in mind that the taking into consideration of the public concerned by the mark applied for occurs not in the context of the examination of reputation, but, as OHIM rightly observed, in the context of the examination of whether any unfair advantage has been taken of the distinctive character or reputation of the earlier marks. As is apparent from Intel Corporation, paragraph 33 above (paragraph 36), injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods or services for which the mark applied for is registered, who are reasonably well informed and reasonably observant and circumspect, in so far as what is prohibited is the drawing of benefit from the earlier mark by the proprietor of the mark applied for.

36 Third, with respect to the strength of the reputation of the earlier marks, which the applicant disputes, the Court would point out that the material mentioned in paragraph 16 of the contested decision (namely the witness statement of Mr A., the figures from the record company EMI, the copies of the accounts mentioning the figures) highlights the importance of the sales of one of the Beatles' albums which reached the top chart position in over 30 countries and more than 8 million copies of which were sold. Moreover, it is apparent from the contested decision that combined sales of sound records bearing the mark BEATLES amounted to 28.7 million between 1995 and 2004, figures which were supported by accounting documents in the file and whose veracity and authenticity have not been contested by the applicant. Furthermore, amongst the numerous articles from various international press bodies, the Daily Express article of 19 October 2002, which the Board of Appeal cites specifically in paragraph 16 of the contested decision, highlights the fact that the Beatles group is considered to be a group having an exceptional reputation stretching over more than 40 years.

37 In the light of all the material mentioned in paragraph 16 of the contested decision, and which is in OHIM's file which was lodged before the Court, the Board of Appeal was therefore entitled to find that the earlier marks THE BEATLES and BEATLES have an enormous reputation for 'sound records, video records, films'.

38 Moreover, the Board of Appeal was also entitled to find that the earlier marks have a reputation for merchandising products such as toys and games, on account, first, of the manufacture, under licence, of model London taxis and double-decker buses as well as yellow submarines bearing the earlier marks and, second, of the sales figures generated by those goods between 2000 and 2005, although that reputation is lesser than that acquired by the earlier marks for 'sound records, video records, films'.

39 On the basis of that material, and without its being necessary to rule on the inadmissibility - raised by OHIM - of the applicant's argument contesting not the reputation of the earlier marks, but their extent as determined by the Board of Appeal, the Court considers that the Board was entitled to infer from the abovementioned material that the earlier marks have a very substantial reputation.

40 It follows that the Board of Appeal was right to find that the requirement of reputation had been satisfied by the intervener.

41 It must be stated that, as paragraph 18 of the contested decision shows, the signs at issue are highly similar. That similarity is particularly pronounced with respect to the earlier word marks BEATLES, which differ from the mark applied for only on account of the presence in those earlier marks of the final letter 's'.

42 As regards, first, the visual similarity of the signs at issue, the Court shares the view of OHIM that it cannot be claimed that those signs are not similar on the ground that the mark applied for does not contain the final 's' consonant. The signs at issue are highly similar, notwithstanding the presence, in the earlier marks, of the final 's' consonant and, in some of those earlier marks, of the definite article 'the'. Moreover, the Court considers that, even if the mark applied for is of a figurative nature, the figurative element, in so far as it is limited to a simple font, which is moreover very commonplace, does not make it possible to differentiate that font from the font of the earlier word marks. In addition, the Court would point out that word marks, such as some of the earlier marks, are marks consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see judgment of 7 October 2010 in Case T-244/09 Accenture Global Services v OHIM - Silver Creek Properties (acsensa), not published in the ECR, paragraph 28 and the case-law cited). The font of the earlier word marks could therefore be identical to that used by the mark applied for. Lastly, the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 25 March 2009 in Case T-21/07 L'Oréal v OHIM - Spa Monopole (SPALINE), not published in the ECR, paragraph 24), and will therefore pay less attention to the final 's'.

43 As regards, second, the phonetic similarity, the signs at issue would be pronounced in the same way were it not for the presence of the final letter 's' in the earlier word marks BEATLES; however this does not make it possible to differentiate clearly between those signs. Even with respect to the other earlier marks which contain the definite article 'the', there is a high level of similarity because of the presence in the signs at issue of the element 'beatle' or 'beatles'.

44 As regards, third, the conceptual similarity, the Court would point out that, in the light of the definition of the term 'beatle' given in the English dictionary mentioned by the Board of Appeal in paragraph 18 of the contested decision and in so far as that term appears in that dictionary as an adjective denoting a 'beatle-style' attitude or attire, the two signs at issue share the same semantic content, to the extent that one term will be understood as referring to the other.

45 It follows from the foregoing that the Board of Appeal was right to find, in particular in paragraph 20 of the contested decision, that, visually, phonetically and conceptually, the signs at issue are highly similar.

46 According to case-law, the various infringements covered by Article 8(5) of Regulation No 207/2009 are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between them, even though it does not confuse them. The existence of a link between the mark applied for and the earlier mark, which must be appreciated globally, taking into account all factors relevant to the circumstances of the case, is therefore an essential condition for the application of that provision (nasdaq, paragraph 28 above, paragraph 53; see, also, Case C-408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, paragraphs 29, 30 and 38; Intel Corporation, paragraph 33 above, paragraphs 57, 58 and 66; and Case C-552/09 P Ferrero v OHIM [2011] ECR I-0000, paragraph 53).

47 Those factors include, first, the degree of similarity between the signs at issue, second, the nature of the goods or services for which the signs at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, third, the strength of the earlier mark, fourth, the degree of the earlier mark's distinctive character, whether inherent or acquired through use and, fifth, the existence of the likelihood of confusion on the part of the public (Intel Corporation, paragraph 33 above, paragraph 42).

48 It is therefore appropriate, for the purposes of assessing the existence of a link between the signs at issue, to examine the factors set out in the case-law and referred to in paragraph 47 above.

49 In the first place, it is apparent from paragraphs 41 to 45 above that the signs at issue are highly similar and that that similarity concerns the visual, phonetic and conceptual aspects.

50 In the second place, as regards the nature of the goods in question, the Court finds, like the Board of Appeal in paragraph 19 of the contested decision, that it cannot be claimed, notwithstanding the intervener's assertions to the contrary, that the goods are similar.

51 It is necessary to compare, on the one hand, 'sound records, video records, films' as well as merchandising products such as toys and games and, on the other hand, 'wheelchairs electric, wheelchairs not-electric, wheelchairs hand-operated, specially made for disabled and or persons requiring assistance; scooters, scootermobiles, minicruisers, specially made for sick and disabled persons and other persons requiring assistance; parts and fittings for all the aforesaid goods, included in this class, in particular belts, harnesses, chairs and supports (cushions), safety systems for wheelchair occupants and systems for locking wheelchairs, including control apparatus; all the aforesaid goods specially made for disabled persons and other persons requiring assistance not included in other classes'.

52 It must be stated that those goods, first, do not have the same nature, use or purpose, second, are not complementary or in competition and, lastly, do not share the same sales channels.

53 However, even if the goods bearing the earlier marks are directed at the public at large and the goods bearing the mark applied for are directed at sick or elderly persons or persons with reduced mobility, the Court would point out that, as the Board of Appeal correctly observed in paragraph 19 of the contested decision, there is an overlap between those two sections of the public, in so far as persons with reduced mobility are also part of the public at large and the goods bearing the earlier marks are therefore directed at such persons, who may therefore purchase those goods (see, in that regard, Intel Corporation, paragraph 33 above, paragraph 46).

54 In the third place, as is apparent from paragraphs 27 to 40 above, the earlier marks have an enormous reputation for 'sound records, video records and films' and a lesser reputation for games and toys.

55 In the fourth place, as regards the distinctive character of the earlier marks, the Court observes that, contrary to the applicant's submission, the Board of Appeal was correct in taking the view, in paragraph 17 of the contested decision, that the words 'beatles' and 'the beatles' have come to be associated by the public at large, in both the English-speaking part of the European Union and in many other parts of the European Union, with 'sound records, video records, [and] films' - as well as to a somewhat lesser extent with the goods mentioned above - of the popular music group of the same name.

56 The applicant's argument that the word 'beatles' does not have distinctive character, since it is not an invented word, but is derived from the word 'beat', cannot be accepted.

57 As OHIM correctly observed, the marks THE BEATLES and BEATLES do not merely refer to the English word 'beat', but integrate that word into a fanciful construction combining the reference to 'beat' with the word 'beetle' in order to create a very distinctive and original combination of the two words.

58 In any event, it must be stated that the term 'beatles' has acquired its own distinctive character separate from the word 'beat' of which it is composed, so that, when faced with the marks THE BEATLES or BEATLES, the public at large, in particular in the non-English speaking States of the European Union, will immediately think of the eponymous group and, in particular, of the sound records, video records and films of that group, and will not proceed to break the mark down into its constituent parts.

59 In the fifth place, the Court would point out that, although the existence of a likelihood of confusion must be taken into consideration, since the existence of such a likelihood necessarily satisfies the requirement of a link, the implementation of the protection introduced by Article 8(5) of Regulation No 207/2009 does not require the existence of a likelihood of confusion (see, by analogy, Adidas-Salomon and Adidas Benelux, paragraph 46 above, paragraphs 27 to 31, and Intel Corporation, paragraph 33 above, paragraphs 57 and 58).

60 It follows from all the findings set out above relating to the fact that the signs at issue are highly similar, the overlap between the relevant sections of the public, the existence of an enormous reputation of the earlier marks, at least in relation to some of the goods covered, and the distinctive character of those marks that the Board of Appeal was entitled to infer from those factors, as it did so in paragraph 20 of the contested decision, that, notwithstanding the difference between the goods in question, there is a link between the signs at issue, since the mark applied for will call to mind the earlier mark with a reputation on the part of the relevant public (see, to that effect, Ferrero v OHIM, paragraph 46 above, paragraphs 56 to 58).

The unfair advantage taken of the distinctive character or the repute of the earlier marks

61 As regards the requirement that unfair advantage be taken of the distinctive character or the repute of the earlier marks, it should be borne in mind that the proprietor of an earlier trade mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009. When it is foreseeable that such injury will ensue from the use which the proprietor of the mark applied for may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see, by analogy, Intel Corporation, paragraph 33 above, paragraph 38, and Case T-59/08 Nute Partecipazioni and La Perla v OHIM - Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC) [2010] ECR II-0000, paragraph 33).

62 Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see nasdaq, paragraph 28 above, paragraph 54 and the case-law cited).

63 According to case-law, it is established that unfair advantage has been taken of the distinctive character or the repute of the earlier mark where there is clear exploitation and free-riding on the coat tails of a famous mark or an attempt to trade upon its reputation, while detriment to the distinctive character of the earlier mark is usually established where the use of the mark applied for would have the effect that the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used and detriment to the repute is usually established where the goods for which the mark applied for is used appeal to the public's senses in such a way that the earlier mark's power of attraction is diminished (see nasdaq, paragraph 28 above, paragraph 55 and the case-law cited).

64 Furthermore, as these are alternative conditions, it is sufficient that one of those circumstances is established in order to establish detriment caused to the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009 (nasdaq, paragraph 28 above, paragraph 56).

65 Moreover, the stronger the earlier mark's distinctive character and reputation, the easier it will be to accept that detriment has been caused to it for the purposes of Article 8(5) of Regulation No 207/2009 (see nasdaq, paragraph 28 above, paragraph 57 and the case-law cited).

66 Lastly, it should be borne in mind that the more immediately and strongly the earlier mark is brought to mind by the mark applied for, the greater the likelihood that the current or future use of the mark applied for is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark (Intel Corporation, paragraph 33 above, paragraph 67).

67 As regards specifically the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the mark applied for, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the mark applied for is registered, who are reasonably well informed and reasonably observant and circumspect (Intel Corporation, paragraph 33 above, paragraph 36, and Antartica v OHIM, paragraph 28 above, paragraph 48).

68 In the present case, the applicant complains that the Board of Appeal found that a serious risk that unfair advantage would be taken of the distinctive character or repute of the earlier marks had been proved even though, as is apparent from paragraph 29 of the contested decision, no proof was required.

69 In that regard, it must be stated that it is incorrect to claim, as the applicant does in the application, that the Board of Appeal did not require proof of a serious risk, since the Board found, in paragraph 29 of the contested decision, that the proof already submitted by the intervener was sufficient to demonstrate the serious risk of detriment to those marks, without it being necessary for the intervener to provide any further proof.

70 It is apparent from the evidence set out in paragraph 16 of the contested decision and on which the Board of Appeal relied to make the findings set out in paragraphs 28 to 31 of the contested decision regarding the risk of the existence of an unfair advantage that the applicant's arguments on that point cannot be accepted.

71 It is correct, as the Board of Appeal observed in paragraph 28 of the contested decision, that, while the goods are quite different, it is not altogether inconceivable that an association could be made between the signs at issue on the part of the relevant public and, even if there is no likelihood of confusion by the relevant public, be led to transfer the values of the earlier marks to the goods bearing the mark applied for. The image portrayed by the earlier marks is, even after 50 years of existence, still synonymous with youth and a certain counter-culture of the 1960s, an image which is still positive and which could specifically benefit the goods covered by the mark applied for.

72 That very positive image portrayed by the earlier marks could benefit the goods covered by the mark applied for, since the relevant public, on account specifically of the handicap in question, would be particularly attracted by the very positive image of freedom, youth and mobility associated with the earlier marks, especially since, as the intervener stated at the hearing, a part of the public targeted by the goods concerned by the mark applied for belongs to the generation of persons who knew the goods bearing the earlier marks in the 1960s and some of whom may now be concerned by the goods covered by the mark applied for.

73 That image transfer would therefore enable the applicant, as the Board of Appeal correctly observed in paragraph 29 of the contested decision, to introduce its own trade mark on the market without incurring any great risk and the costs - in particular advertising costs - of launching a newly created mark.

74 It follows from the foregoing that the Board of Appeal did not err in finding, in paragraph 29 of the contested decision, that it is likely that, by using the mark applied for, the applicant would take unfair advantage of the repute and the consistent selling power of the earlier trade mark(s).

75 As regards the applicant's complaint that the mark applied for would not be detrimental to the distinctive character or repute of the earlier marks, it must be stated that the Board of Appeal did not examine the complaint alleging that detriment might be caused to the distinctive character or repute of the earlier marks. It is not therefore for this Court to rule on an issue which was not examined by the Board of Appeal (see, to that effect, Case T-148/08 Beifa Group v OHIM - Schwan-Stabilo Schwanhäußer (Instrument for writing) [2010] ECR II-1681, paragraph 124, and judgment of 24 May 2011 in Case T-408/09 ancotel v OHIM - Acotel (ancotel.), not published in the ECR, paragraph 51).

76 In the present case, it is sufficient to note that the applicant did not argue before the Board of Appeal the existence of due cause for the use of the mark applied for. In those circumstances the Board of Appeal was right to conclude that there was no due cause for the applicant's use of the sign BEATLE (see, to that effect, nasdaq, paragraph 28 above, paragraph 64; see, also, Intel Corporation, paragraph 33 above, paragraph 39).

77 Moreover, it should be noted that, when asked a question to this effect by the Court at the hearing, the applicant acknowledged that the argument based on the fact that the mark applied for was used for more than 10 years, which was put forward in support of the claim of the existence of due cause, had not been relied on in the administrative procedure, formal note of which was made in the minutes of the hearing. That argument must therefore be declared inadmissible, together with the evidence relating to that argument.

78 It must be stated that the purpose of an action brought before the General Court pursuant to Article 65(2) of Regulation No 207/2009 is to obtain a review of the legality of decisions of the Boards of Appeal. First, in the context of that regulation, pursuant to Article 76 thereof, that review must 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 7 November 2007 in Case T-57/06 NV Marly v OHIM - Erdal (Top iX), not published in the ECR, paragraph 54 and the case-law cited). Second, with respect to the annexes produced before the Court that were not produced in the administrative procedure, they cannot be taken into consideration, and the abovementioned documents must therefore be excluded without it being necessary to assess their probative value (see Case T-346/04 Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19 and the case-law cited).

79 The Court therefore rejects the plea in law alleging infringement of Article 8(5) of Regulation No 207/2009.

80 As regards the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal did not base the contested decision on that provision, and accordingly it is not for this Court to rule on an issue which was not examined by the Board of Appeal (see, to that effect, Instrument for writing, paragraph 75 above, paragraph 124, and ancotel, paragraph 75 above, paragraph 51).

82 Under Article 87(2) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> You-Q v OHMI - Apple Corps (BEATLE) (Community trade mark) [2012] EUECJ T-369/10 (29 March 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/T36910.html Cite as: [2012] EUECJ T-369/10

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