Benelli Q. J. v OHMI - Demharter (MOTO B) (Judgment) [2016] EUECJ T-169/13 (02 February 2016)

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(Community trade mark — Opposition proceedings — Application for the Community figurative mark MOTO B — Earlier non-registered national figurative marks MOTOBI — Relative ground for refusal — Evidence that the earlier non-registered marks are well known — Article 8(2)(c) of Regulation (EC) No 207/2009 — Article 6bis of the Paris Convention — Evidence submitted in support of the opposition after the expiry of the period set for that purpose — Failure to take account thereof — Discretion of the Board of Appeal — Provision to the contrary — Circumstances precluding additional or supplementary evidence from being taken into account — Article 76(2) of Regulation No 207/2009 — Rules 19 and 20 of Regulation (EC) No 2868/95 — Rule 50(1), third subparagraph, of Regulation No 2868/95 — First sentence of Article 75 of Regulation No 207/2009 — Obligation to state reasons)

Benelli Q.J. Srl, established in Pesaro (Italy), represented by P. Lukácsi and B. Bozóki, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by F. Mattina and subsequently by P. Bullock, acting as Agents,

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

Demharter GmbH, established in Dillingen (Germany), represented by A. Kohn, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 16 January 2013 (Case R 95/2012-2), relating to opposition proceedings between Benelli Q.J. Srl and Demharter GmbH,

composed of M.E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,

having regard to the response of OHIM lodged at the Court Registry on 20 June 2013,

having regard to the response of the intervener lodged at the Court Registry on 17 June 2013,

1 On 23 December 2009, the intervener, Demharter GmbH, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the following figurative sign, claiming the colours black, white, red, gold, green, brown and grey:

3 The goods in respect of which registration was sought are in Classes 9, 12 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 correspond to the following description:

– Class 25: ‘Clothing, footwear, textile headgear, in particular for motorcyclists’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 53/2010 of 22 March 2010.

5 On 22 June 2010, the applicant, Benelli Q.J. Srl, filed a notice of opposition under Article 41 of Regulation No 207/2009 against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition, founded on Article 8(1)(b) and Article 8(2)(c) of Regulation No 207/2009, was based on the following earlier rights:

– the following Italian, non-registered mark which is well known for ‘motorcycles’:

– the following Italian, non-registered mark which is well known for ‘clothing’:

– the following Italian, non-registered mark which is well known for ‘motorcycles’:

7 On 29 June 2010, OHIM informed the applicant that the time limit for substantiation of its earlier rights would expire on 30 October 2010. At the request of the applicant, that deadline was extended to 30 December 2010. On 3 January 2011, the applicant’s request for a second extension was refused on the ground that it had not demonstrated the existence of exceptional circumstances. Nevertheless, for reasons of equity, OHIM granted the applicant an extension of six days. On 10 January 2011, the applicant submitted documents intended to prove the well-known character of its earlier non-registered marks in Italy. On 22 April and 11 October 2011, the applicant submitted additional evidence.

8 By decision of 15 November 2011, the Opposition Division rejected the opposition on the ground that the evidence provided by the applicant was insufficient to establish the well-known character of the earlier non-registered marks in Italy.

9 On 11 January 2012, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 60 of Regulation No 207/2009, against the decision of the Opposition Division. On 14 March 2012, the applicant filed the statement of grounds of appeal, which included additional evidence.

10 By decision of 16 January 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. First, concerning the evidence produced before the Opposition Division, the Board of Appeal, having described all the documents lodged by the applicant during the administrative proceedings, declared, in point 28 of that decision, that it endorsed the Opposition Division’s conclusion that the documents submitted by the applicant were insufficient for the purposes of establishing the well-known character of its earlier non-registered marks and, in point 29 of the contested decision, made reference to the reasoning of the Opposition Division. In paragraphs 30 to 35 of the decision in question, the Board of Appeal elaborated on its reasoning for finding that the evidence was insufficient for those purposes.

11 Secondly, concerning the evidence produced for the first time before it, the Board of Appeal first observed, in point 37 of the contested decision, that, as regards the application of Article 76 of Regulation No 207/2009, the Court of Justice had held that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remained possible after the expiry of the time limits to which such submission was subject under the provisions of that Regulation, and that OHIM was in no way prohibited from taking account of facts and evidence which were submitted or produced late; however, OHIM had a discretion as to whether or not to take such belated evidence into account.

12 Nevertheless, in point 39 of the contested decision, the Board of Appeal found that the time limit laid down by Rule 19(4) and Rule 20(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), was a strict time limit, which meant that OHIM could not take account of evidence that was submitted late. Consequently, the documents concerned were declared inadmissible.

13 In point 41 of the contested decision, the Board of Appeal nonetheless stated that, in any case, none of the belated documents submitted before it gave information on the market share held by the earlier non-registered marks or the proportion of the relevant section of the public who, because of the marks, identified the goods at issue as originating from the applicant’s undertaking before the filing date of the contested Community trade mark application. The Board of Appeal added that no turnover or advertising figures were given and that the evidence submitted by the applicant contained no indication regarding the degree of knowledge or recognition of the mark in the relevant sector of the public.

– order OHIM to pay the costs or, if the other party to the proceedings intervenes before the Court in support of OHIM, order OHIM and the intervener to pay the costs jointly and severally.

Admissibility of the general reference by the applicant to its written submissions in the proceedings before OHIM

16 OHIM submits that the general reference made by the applicant to all the arguments which it had submitted in writing in the administrative proceedings is inadmissible.

17 Under Article 21 of the Statute of the Court of Justice of the European Union and Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991, applications must include a summary of the pleas in law on which they are based. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see judgment of 8 July 2010 in Engelhorn v OHIM — The Outdoor Group (peerstorm), T‑30/09, ECR, EU:T:2010:298, paragraph 18 and the case-law citied therein).

18 At the hearing, the applicant stated, in response to a question put by the Court, that the reference it had made at certain points in the application was not to be interpreted as a general reference, but that its arguments were limited solely to the specific points developed in the application. In the light of that further information, the Court concludes that the plea of inadmissibility raised by OHIM must be rejected.

The admissibility of the complaints directed against the Opposition Division’s decision

19 OHIM contends that the applicant’s objections against the findings made by the Opposition Division should be declared inadmissible.

20 It must be recalled in this connection that, by virtue of Article 65(1) of Regulation No 207/2009, actions may be brought before the European Union judicature only against decisions of the Boards of Appeal so that it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such an action (judgment of 7 June 2005 in Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, ECR, EU:T:2005:200, paragraph 59).

21 At the hearing, the applicant stated, in reply to a question put by the Court, that the application was to be interpreted to the effect that the complaints set out therein were directed solely against the contested decision. Accordingly, the plea of inadmissibility raised by OHIM in this regard must be rejected

22 The applicant has attached to the application before the Court new evidence consisting of an affidavit by the Mayor of the municipality of Pesaro (Italy). OHIM contends that the affidavit is inadmissible.

23 In that regard, it should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of OHIM as provided for in Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it (judgments of 19 November 2008 in Rautaruukki v OHIM (RAUTARUUKKI), T‑269/06, EU:T:2008:512, paragraph 20, and of 25 June 2010 in MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, ECR, EU:T:2010:256, paragraph 16). It follows that facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before the Court (see judgment of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 54 and the case-law cited therein).

24 Moreover, it must be stated that the applicant, replying to a question put by the Court, did not deny that the Mayor of Pesaro, who held that position from 2004 onwards, could have had drawn up at the applicant’s request, during the administrative proceedings, an affidavit which, although different on account of the dates referred to therein, which are subsequent to the date of the administrative proceedings, would nevertheless have been similar to that drawn up in the context of the present action.

25 In those circumstances, as OHIM contends, the annex referred to in paragraph 22 above, which was not produced by the applicant during the administrative proceedings, must be declared inadmissible.

26 The applicant submits, in essence, two pleas in law against the contested decision, alleging (i) infringement of Article 8(2)(c) of Regulation No 207/2009 read in conjunction with Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaty Series, Vol. 828, No 11847, p. 108) (‘the Paris Convention’) and (ii) infringement of Rule 50(1), third subparagraph, of Regulation No 2868/95.

27 At the hearing, the applicant raised a new plea, alleging a lack of a statement of reasons for the finding that the evidence submitted before the Board of Appeal as to the well-known character of the earlier non-registered marks in Italy was insufficient, with the result that the applicant was not in a position to know why those additional documents were insufficient to establish that the marks were well known.

28 It is necessary to examine the new plea, alleging infringement of the obligation to state reasons, first, the plea alleging infringement of Rule 50(1), third subparagraph, of Regulation No 2868/95 second, and the plea alleging infringement of Article 8(2)(c) of Regulation No 207/2009, read in conjunction with Article 6bis of the Paris Convention, third.

29 At the hearing, the applicant alleged that the Board of Appeal had infringed the obligation to state reasons by not stating precisely why the documents lodged before it were insufficient for the purposes of establishing the well-known character of the earlier non-registered marks in Italy.

30 Although that new plea was raised at the hearing, it should be noted, first, that an inadequate statement of reasons in breach of the second paragraph of Article 296 TFEU constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is, moreover, a plea which may, and even must, be raised by the European Union judicature of its own motion (see judgment of 10 July 2008 in Bertelsmann and Sony Corporation of America v Impala, C‑413/06 P, ECR, EU:C:2008:392, paragraph 174 and the case-law cited therein; judgment of 27 September 2012 in J v Parliament, T‑160/10, EU:T:2012:503, paragraph 17).

31 Secondly, the first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM must state the reasons on which they are based. According to case-law, that obligation has the same scope as that laid down by the second paragraph of Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure so as to enable them to protect their rights and, secondly, to enable the Courts of the European Union to review the legality of the decision (judgments of 6 September 2012 in Storck v OHIM, C‑96/11 P, EU:C:2012:537, paragraph 86, and of 15 July 2014 in Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, EU:T:2014:667, paragraph 76).

32 Moreover, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see judgment in PROTEKT, cited in paragraph 31 above, EU:T:2014:667, paragraph 77 and the case-law cited therein).

33 It must furthermore be observed that the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not reply to each of those arguments, cannot by itself lead to a finding that the Board of Appeal refused to take them into account (see judgment in PROTEKT, cited in paragraph 31 above, EU:T:2014:667, paragraph 78 and the case-law cited therein).

34 In the present case, the Board of Appeal held, in point 41 of the contested decision (see paragraph 13 above), first, that the additional evidence did not provide any information on the market share held by the marks at issue or the proportion of the relevant section of the public who, because of the marks, identified the goods at issue as originating from the applicant’s undertaking before the filing date of the contested trade mark application, next, that no turnover or advertising figures were given and, lastly, that the evidence submitted contained no indication regarding the degree of knowledge or recognition of the mark in the relevant sector of the public.

35 It must be stated that, without prejudice to the assessment of the merits of the reasons stated in point 41 of the contested decision, which will be conducted in the examination of the first plea, those findings are sufficiently detailed to enable the applicant to understand why the documents lodged before the Board of Appeal were insufficient for the purposes of establishing that the earlier non-registered marks were well known in Italy and for the Court to review the legality of the contested decision.

36 It follows that the new plea alleging infringement of the obligation to state reasons must be rejected.

Second plea in law, alleging infringement of Rule 50(1), third subparagraph, of Regulation No 2868/95

37 The applicant criticises the Board of Appeal for declaring inadmissible the documents filed before it by the applicant on 14 March 2012 on the ground that they had been submitted after the expiry of the strict time limits laid down by Rule 19(4) and Rule 20(1) of Regulation No 2868/95, whereas, the applicant submits, those documents should have been regarded as additional evidence within the meaning of Rule 50(1), third subparagraph, of Regulation No 2868/95.

38 The Board of Appeal observed in this connection, in point 37 of the contested decision that, as regards the application of Article 76 of Regulation No 207/2009, the Court of Justice had held that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remained possible after the expiry of the time limits to which such submission was subject under the provisions of Regulation No 207/2009, and that OHIM was in no way prohibited from taking account of facts and evidence which were submitted or produced late, so that OHIM had a wide discretion as to whether or not to take such belated evidence into account.

39 In paragraph 38 of the contested decision, the Board of Appeal held that Rule 19(4) and Rule 20(1) of Regulation No 2868/95 were indeed provisions to the contrary which were thus a bar to OHIM having discretion in that regard. In point 39 of that decision, the Board of Appeal inferred from the interpretation of those rules that they precluded any evidence submitted late from being taken into account. The Board of Appeal therefore concluded, in point 40 of the decision in question, that the documents which had been submitted before it by the applicant were inadmissible.

40 It must be stated that the Board of Appeal’s interpretation of Rule 19(4) and Rule 20(1) of Regulation No 2868/95 is incorrect.

41 Admittedly, Article 76(2) of Regulation No 207/2009 provides that OHIM may disregard facts or evidence which are not submitted in due time by the parties concerned.

42 As the Court has held, it results from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of that regulation and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgments in OHIM v Kaul, cited in paragraph 23 above, EU:C:2007:162, paragraph 42; of 18 July 2013 in New Yorker SHK Jeans v OHIM, C‑621/11 P, ECR, EU:C:2013:484, paragraph 22, and of 3 October 2013 in Rintisch v OHIM, C‑122/12 P, ECR, EU:C:2013:628, paragraph 23).

43 Furthermore, although the first subparagraph of Rule 50(1) of Regulation No 2868/95 also stipulates that, unless otherwise provided, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis, the third subparagraph of Rule 50(1) constitutes a special rule derogating from that principle. That special rule is specific to the appeal proceedings brought against the Opposition Division’s decision and specifies the rules, before the Board of Appeal, governing the facts and evidence submitted after the expiry of the time limits set or specified at first instance (judgment in Rintisch v OHIM, cited in paragraph 42 above, EU:C:2013:628, paragraph 29).

44 Thus, the third subparagraph of Rule 50(1) of Regulation No 2868/95 must therefore be applied, at this particular stage of the appeal proceedings against the Opposition Division’s decision, in place of the provisions relating to the proceedings before that division, which include Rule 19(4) and Rule 20(1) of Regulation No 2868/95 (see, to that effect, judgment in Rintisch v OHIM, cited in paragraph 42 above, EU:C:2013:628, paragraph 30).

45 Moreover, as the Court of Justice pointed out in paragraph 31 of the judgment in Rintisch v OHIM, cited in paragraph 42 above (EU:C:2013:628), the third subparagraph of Rule 50(1) of Regulation No 2868/95 was introduced into that regulation when it was amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), which, according to recital 7 thereof, seeks to specify clearly the legal consequences of procedural deficiencies in the opposition proceedings. That statement confirms that the consequences, before the Board of Appeal, of the delay in the submission of evidence before the Opposition Division must be determined on the basis of that rule.

46 The Court also went on, in paragraphs 32 to 34 of the judgment in Rintisch v OHIM, cited in paragraph 42 above (EU:C:2013:628), to state the following:

‘32 Under the third subparagraph of Rule 50(1) of ... Regulation [No 2868/95], where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time limits set ... or specified by the Opposition Division, unless the Board considers that additional or supplementary facts and evidence must be taken into account pursuant to Article [76](2) of Regulation No [207/2009].

33 ... Regulation [No 2868/95] therefore expressly provides that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion deriving from the third subparagraph of Rule 50(1) of ... Regulation [No 2868/95] and from Article [76](2) of Regulation No [207/2009] to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division.

34 Consequently, in finding, in paragraph 42 of the judgment under appeal, that Rule 20(1) of ... Regulation [No 2868/95] constituted a provision to the contrary which prevented evidence submitted late to OHIM by the appellant from being taken into account by the Board of Appeal, with the result that the Board of Appeal did not have any discretion under Article [76](2) of Regulation No [207/2009] for the purposes of taking into account that evidence, the General Court committed an error of law which vitiates its judgment.’

47 It thus follows from the foregoing that the Board of Appeal erred in holding, in point 38 of the contested decision, that it had no discretion to take into account facts and evidence submitted out of time.

48 It is clear, however, from paragraph 41 of the contested decision, that the Board of Appeal not only sought to ascertain whether it could exercise its discretion in the case before it, that is to say, as is apparent from, inter alia, paragraph 39 of the judgment in Rintisch v OHIM, cited in paragraph 42 above (EU:C:2013:628), whether it could find that the material produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it, having regard to the stage of the proceedings at which that late submission takes place and the circumstances surrounding it. The Board of Appeal also examined the relevance of all the material produced by the applicant, including that lodged before it, before going on to conclude that there was no evidence of the well-known nature of the earlier non-registered marks.

49 The Board of Appeal held, in point 41 of the contested decision, that ‘[i]n any case, none of the belated documents submitted before the Board [gave] information on the market share held by the marks in question or the proportion of the relevant section of the public who, because of the marks, [identified] the goods at issue as originating from the [applicant’s] undertaking before the filing date of the contested CTM application’, that ‘[n]o turnover or advertising figures [had been] given’ and that ‘[t]he evidence submitted by the [applicant contained] no indication regarding the degree of knowledge or recognition of the mark in the relevant sector of the public’.

50 Accordingly, since the Board of Appeal examined the relevance of the documents, the applicant’s complaint is ineffective.

51 It follows from the foregoing considerations that the second plea in law must be rejected.

First plea in law, alleging infringement of Article 8(2)(c) of Regulation No 207/2009 read in conjunction with Article 6bis of the Paris Convention

52 Article 8(2)(c) of Regulation No 207/2009 includes within the concept of an earlier trade mark those marks which are well known within the meaning of Article 6bis of the Paris Convention.

‘The countries of the Union [for the protection of industrial property] undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods…’

54 It is clear from that provision that well-known marks within the meaning of Article 6bis of the Paris Convention are marks which, on the basis of their reputation in the territorial area at issue and, irrespective of whether proof of registration is provided, enjoy protection against a likelihood of confusion (judgment of 11 July 2007 in Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, ECR, EU:T:2007:214, paragraph 51).

55 Since Article 8(2)(c) of Regulation No 207/2009 refers to trade marks which are ‘well known in a Member State, in the sense in which the words “well known” are used in Article 6bis of the Paris Convention’ it is necessary, in order to ascertain how the existence of a well-known mark can be proved, to refer to the guidelines for the interpretation of Article 6bis (judgment of 17 June 2008 in El Corte Inglés v OHIM — Abril Sánchez and Ricote Saugar (BoomerangTV), T‑420/03, ECR, EU:T:2008:203, paragraph 79).

56 Under Article 2 of the joint recommendation concerning the provisions on the protection of well-known trademarks, adopted by the Assembly of the Paris Union and the General Assembly of the World Intellectual Property Organisation (WIPO) at the 34th series of meetings of assemblies of the Member States of the WIPO (of 20 to 29 September 1999) (‘the joint recommendation’), in determining whether a mark is a well-known mark within the meaning of the Paris Convention, the competent authority can take into account any circumstances from which it may be inferred that the mark is well known, including: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent to which they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as well known by competent authorities; the value associated with the mark (judgment in BoomerangTV, cited in paragraph 55 above, EU:T:2008:203, paragraph 79).

57 Article 2(1)(c) of the joint recommendation states that the factors listed in paragraph 56 above are ‘guidelines to assist the competent authority [in determining] whether the mark is a well-known mark and [that those factors] are not pre-conditions for reaching that determination’, that ‘[r]ather, the determination in each case will depend upon the particular circumstances of that case’, that ‘[i]n some cases all of the factors may be relevant’, that ‘[i]n still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed [in paragraph 56] above’ and that ‘[s]uch additional factors may be relevant, alone, or in combination with one or more of the factors listed [in paragraph 56] above.’

58 Furthermore, since the Court of Justice has held, in the judgment of 22 November 2007 in Nieto Nuño (C‑328/06, ECR, EU:C:2007:704, paragraph 17), that whether a mark is well known is a kindred concept to the reputation of a mark, regard must be had to the assessment criteria laid down by the Court of Justice for reputation, a concept which is referred to in Article 5(2) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) and Article 8(5) of Regulation No 207/2009.

59 In this connection, as may be extrapolated from the judgment of 14 September 1999 in General Motors (C‑375/97, ECR, EU:C:1999:408), it cannot be inferred from either the letter or the spirit of Article 8(5) of Regulation No 207/2009 that the trade mark must be known by a given percentage of the public so defined. The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark. In examining whether this condition is fulfilled, the national court must 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. In addition, territorially, the condition is fulfilled when, in the terms of Article 8(5) of Directive No 207/2009, the trade mark has a reputation ‘in the Member State’. In the absence of any definition of this latter provision in this respect, a trade mark cannot be required to have a reputation ‘throughout’ the territory of the Member State. It is sufficient for it to exist in a substantial part of it (see, to that effect, judgment in General Motors, EU:C:1999:408, paragraphs 25 to 28).

60 Moreover, although, in accordance with the joint recommendation, as the applicant submits, it need not be established that the non-registered mark was put to use in the territory in respect of which protection is claimed, by contrast, it cannot reasonably be disputed that the non-registered mark must be well known in the territory of the Member State whose national law is relied upon in support of the notice of opposition.

61 The assessment of whether the Board of Appeal was justified in finding that the earlier non-registered marks were not well known in Italy must therefore be performed within that framework.

62 In this connection, it is necessary to ascertain whether, prior to the date on which the trade mark application was filed, that is prior to 29 December 2009, the earlier non-registered marks were well known in Italy, that is to say, according to the case-law cited in paragraph 59 above, whether they were known by a significant part of the public concerned by the products or services covered by those marks.

63 As OHIM correctly observes, knowledge of a trade mark on a specific market is typically established by means of market surveys concerning the relevant public’s perception of that mark. In the present case, the file submitted by the applicant does not include any market survey from which the relevant public’s perception can be deduced.

64 However, it may not be inferred solely from the absence of any market surveys that the applicant is unable to establish the well-known character of the earlier non-registered marks by other means.

65 The applicant has included various documents in the file which, it submits, are capable of establishing the well-known character of the earlier non-registered marks.

66 Those documents must therefore be examined so that the Court can ascertain whether the applicant has proved that those non-registered marks were well known.

67 First of all, for the purposes of proving that those marks were well known, the evidence dated after the filing date of the Community trade mark application and which does not relate to events which took place before the date on which that application was filed must be disregarded.

68 Moreover, as regards the evidence drafted in a language other than the language of the proceedings, attention must be drawn to the observations already made by the Court in the judgment of 27 June 2012 in Interkobo v OHIM — XXXLutz Marken (my baby) (T‑523/10, ECR, EU:T:2012:326).

69 It follows from Rule 20(1), Rule 19 and Rule 98(1) of Regulation No 2868/95 that, when the information and evidence referred to in Rule 19(1) and (2) of Regulation No 2868/95 are in a language other than that of the proceedings, the opposing party must file, at the stage of the opposition, within the period prescribed for the production of that information and evidence, a translation of those documents, which must meet specific requirements regarding both its form and content (judgment in my baby, cited in paragraph 68 above, EU:T:2012:326, paragraph 23).

70 First, Rule 19(3) of Regulation No 2868/95 stipulates that the information and evidence not in the language of the proceedings must be ‘accompanied’ by a translation. As regards Rule 98(1) of that regulation, it provides that the translation must ‘identify’ the document to which it refers and reproduce, inter alia, the ‘structure’ of that document. Combined, those two rules indicate, in particular, that the translation of any of the information or evidence referred to in Rule 19(1) and (2) of Regulation No 2868/95 must be submitted not in the form of mere annotations in the original document but of one or several separate written documents. In the event that that formal requirement is not met, the above-mentioned information and evidence submitted by the opposing party cannot be taken into account in the opposition proceedings (judgment in my baby, cited in paragraph 68 above, EU:T:2012:326, paragraph 24).

71 The purpose of that formal requirement is, firstly, to enable the other party to the opposition proceedings, as well as the OHIM bodies, to easily differentiate the original document from its translation, and secondly, to ensure that the latter is sufficiently clear. In other words, the objective is, in particular, to enable the debate between the parties to the opposition proceedings to take place on a sound basis, in accordance with the principle of audi alteram partem and to ensure equality of arms (see judgment in my baby, cited in paragraph 68 above, EU:T:2012:326, paragraph 25 and the case-law cited therein).

72 Secondly, it is apparent from Rule 98(1) of Regulation No 2868/95, interpreted in the light of the considerations set out in the previous paragraph of the present judgment, that the translation, presented, as set out above, in the form of a separate written document, must faithfully reproduce the contents of the original document. In case of doubt as to the faithfulness of the translation, the OHIM bodies are entitled to require from the interested party the production of a certificate attesting that the translation corresponds to the original text (judgment in my baby, cited in paragraph 68 above, EU:T:2012:326, paragraph 26).

73 It follows from the considerations set out in paragraphs 69 to 72 above that evidence drafted in a language other than the language of the proceedings cannot be taken into account.

74 So far as concerns the other documents produced in the administrative proceedings, it must be stated that, notwithstanding the significant number submitted, those documents do not establish that the earlier non-registered marks are well known in Italy.

75 Even if, as the applicant claims, proof of use of the earlier non-registered marks is not required for the purposes of proving their well-known character, the fact remains that it is impossible to establish on the basis of the evidence provided by the applicant in the administrative proceedings whether those marks are well known by the relevant public.

76 First, it must be observed that point 2.3 of the Explanatory Notes on Article 2 of the joint recommendation states:

‘The degree of knowledge or recognition of a mark can be determined through consumer surveys and opinion polls. The point under consideration recognises such methods, without setting any standards for methods to be used or quantitative results to be obtained’.

77 The degree of knowledge on the part of the relevant public of the earlier non-registered marks cannot be ascertained from any of the documents lodged by the applicant in the administrative proceedings.

78 In this connection, the findings of both the Opposition Division, set out in point 14 of the contested decision, and the Board of Appeal, set out in points 30 to 35 and 40 of that decision, must be endorsed. The applicant has not seen fit to state its grounds for claiming that the Board of Appeal erred in finding that the evidence, in itself, was insufficient. Thus, it has not stated on what grounds the Board of Appeal allegedly erred in refusing to take into account the evidence dated after 29 December 2009 (the date on which the Community trade mark application was filed), the evidence drafted in a language other than that of the proceedings, the evidence without dates and that which did not contain any information regarding the earlier non-registered figurative marks.

79 Consequently, it must be concluded that the mere fact that the applicant in the administrative proceedings submitted, as it itself states, more than 40 documents in the annexes is of no account for the purposes of establishing that the earlier non-registered marks were well known, in so far as the value of that evidence depends not on the volume of the annexed documents, especially where those documents refer to none of those earlier figurative marks (but to the Benelli mark), but on the quality and the relevance of the documents, which must enable the applicant to prove that the marks were well known, since the well-known character of a non-registered mark cannot simply be assumed on the basis of fragmentary and insufficient evidence.

80 Moreover, as regards, specifically, the applicant’s claim to have participated in the allegedly famous EICMA Annual Exhibition, although that participation is an important fact in connection with the marks’ well-known character, it must be stated that the document included by the applicant in the annex as evidence of its participation in that exhibition is, as observed by the Opposition Division and confirmed by the Board of Appeal, an advertisement for the 2010 EICMA Exhibition and therefore dated after the filing date of the Community trade mark application. Moreover, that advertisement mentions neither the earlier non-registered marks nor, indeed, the word mark Motobi.

81 While the following annex, which apparently concerns an article on the EICMA Exhibition, in fact refers to both Benelli and Motobi, it also dates from 2010, thus after the filing date of the Community trade mark application, and makes no reference to the earlier non-registered figurative marks which are alleged by the applicant to be well-known marks.

82 As regards, lastly, the applicant’s argument that the Board of Appeal did not assess the evidence as a whole but separated the various pieces of evidence before it, admittedly, it cannot be ruled out that an accumulation of evidence may allow the necessary facts to be established, even though each of those pieces of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgment of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraph 36).

83 However, it must be concluded in the present case that, even after assessing as a whole all of the evidence submitted by the applicant, it still cannot be inferred that the applicant has proved the well-known character of the earlier non-registered marks.

84 It follows from the foregoing that the first plea must be rejected and the action dismissed in its entirety.

85 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful and OHIM and the intervener have applied for costs, the applicant must be ordered to pay the costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Benelli Q. J. v OHMI - Demharter (MOTO B) (Judgment) [2016] EUECJ T-169/13 (02 February 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T16913.html Cite as: ECLI:EU:T:2016:56, EU:T:2016:56, [2016] EUECJ T-169/13

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