Blackmore v EUIPO - Paice (DEEP PURPLE) (EU trade mark - Judgment) [2018] EUECJ T-344/16 (04 October 2018)

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(EU trade mark — Opposition proceedings — Application for the EU word mark DEEP PURPLE — Earlier non-registered mark DEEP PURPLE — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) — Rules governing common-law action for passing-off — No likelihood of misrepresentation — Article 177(1)(d) of the Rules of Procedure of the General Court — Inadmissibility)

Richard Hugh Blackmore, residing in New York, New York (United States), represented initially by A. Edwards-Stuart, and subsequently by T. Alkin, Barristers,

European Union Intellectual Property Office (EUIPO), represented by D. Gája and D. Walicka, acting as Agents,

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

Ian Paice, residing in London (United Kingdom), represented by M. Engelman, Barrister, and J. Stephenson, Solicitor,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 March 2016 (Case R 736/2015-5), relating to opposition proceedings between Mr Paice and Mr Blackmore,

composed of A.M. Collins (Rapporteur), President, M. Kancheva and R. Barents, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 22 September 2016,

having regard to the response of the intervener lodged at the Court Registry on 18 October 2016,

1 On 26 April 2013, the applicant, Mr Richard Hugh Blackmore, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the word sign DEEP PURPLE. Deep Purple is the name of a United Kingdom rock band formed in 1968, inter alia, by the intervener, Mr Ian Paice, and the applicant, who were later joined by other members. Despite the applicant’s departure from the group in 1993, the intervener and other members carried on and continue to give concerts and record new albums under the name Deep Purple.

3 The goods and services in respect of which registration was sought are in Classes 9, 25 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 9: ‘Audio/video recordings of musical performances; phonograph records; musical recordings, including downloadable and physical media versions; downloadable music files; digital music (downloadable) provided from the internet; digital music (downloadable) provided from MP3 internet websites; mouse mats and mouse pads; sound recordings; video recordings; recorded media, computer hardware and firmware; downloadable electronic publications; digital music; mouse mats; mobile phone accessories; sunglasses; audio recordings featuring music; video recordings featuring music; audio tapes featuring music; DVDs featuring music; compact discs featuring music; digital music downloadable from the internet; downloadable MP3 files, MP3 recordings, webcasts and podcasts featuring music; downloadable video recordings featuring music; phonograph records featuring music; pre-recorded video cassettes featuring music; cinematographic films; animated cartoons; film strips; movies; magnetic recordings; optical recordings; electronic books and publications; computer games; software for interactive games for computer, mobile phones and handheld devices; digital recordings; media bearing, or for recording, sound and/or video and/or data and/or information; digital games, mobile phone games; DVD games; radio, television, cable and satellite recordings; sound, video, data, interactive software and multimedia recordings, including recordings in electronic, magnetic or optical form; publications in electronic, magnetic or optical form; pre-recorded digital sound and video storage media; compact discs; compact disc ROMs; mini-discs; digital audio tapes, cassettes, computer chips and discs; digital video tapes, cassettes, computer chips and discs; computer software and computer programs; compact discs, records, pre-recorded audio and video tapes; computer programs; computer games; pre-recorded compact discs and records’;

– Class 25: ‘Clothing, footwear, headgear; pique shirts; polo shirts; rugby shirts; shirts; sport shirts; sweat shirts; t-shirts; baseball caps; golf caps; knitted caps; shower caps; men’s and women’s jackets, coats, trousers; rain jackets; rainproof jackets; sweat jackets; track jackets; wind resistant jackets’;

– Class 41: ‘Entertainment services; musical performances by a musical group; publishing services; entertainment in the nature of visual and audio performances, namely, musical band, rock group; entertainment, namely, live performances by groups; entertainment services, namely, providing non-downloadable pre-recorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment, namely, live music concerts; provision of information relating to music; entertainment services in the nature of live performances; entertainment, namely, live concerts; presentation of live show performances; provision of information relating to live entertainment; provision of entertainment by means of radio, television, satellite, cable, telephone, the worldwide web and the internet; rental of sound recordings and of pre-recorded shows, films, radio and television performances; television entertainment; sound recording, film and video production and distribution services; digital music (not downloadable) provided from the internet and/or websites on the internet; providing on-line electronic publications (not downloadable); publication of books, magazines and other texts on-line; provision of entertainment, both interactive and non-interactive; production and distribution services in the field of recordings of sound, video, data, interactive software and multimedia, in electronic, magnetic, optical or other form; publishing services, including provision of on-line electronic publications; music publishing services; information provided on-line from a computer database or from the internet in relation to entertainment services; studio facilities, music publishing services, presentation of live musical performances; production of musicals, concerts and films; production of music; music composition services’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 108/2013 of 11 June 2013.

5 On 6 September 2013, the intervener filed a notice of opposition to registration of the mark applied for, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), based on the earlier non-registered mark Deep Purple. That mark concerned the following goods and services:

– audio/visual recordings of musical performances, musical recordings, musical digital downloads, DVDs, CDs, cassette tapes, video tapes, programmes;

– entertainment services, musical performances by a musical group, entertainment by visual audio performances; live musical performances, entertainment transmitted by both analogue and digital formats;

– posters, ticket stubs, sales brochures, books, cards, photographs, stickers, books, fliers, car stickers, post cards, bumper stickers, books, cards, photographs, stickers, books, fliers, car stickers;

– buttons, t-shirts, cloth patches, badges, stick pins, caps, silk tapestries, cloth patches, badges, leather arm bands, head bandanas; and

6 The opposition was directed against all the goods and services covered by the mark applied for. The ground relied on in support of the opposition was that set out in Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001). The intervener claimed, in essence, that he was entitled under the applicable law in the United Kingdom to prevent use of the mark applied for by means of an action for passing-off.

7 Following submission of the notice of opposition, EUIPO informed the intervener that he had to substantiate the earlier right on which the opposition was based. The time limit set for that purpose was 2 February 2014.

8 On 9 September 2013, EUIPO received observations from the intervener describing the history of the band Deep Purple and providing evidence. The intervener did not provide any other documents by the time limit set. On 2 June 2014, the applicant filed detailed observations and evidence. On 5 November 2014, the intervener replied to those observations and evidence, supplying additional evidence.

9 The Opposition Division did not, however, take into account the evidence submitted by the intervener on 5 November 2014 on the ground that it had been submitted after the time limit set.

10 On 17 February 2015, the Opposition Division upheld the opposition in part. It thus refused registration of the mark applied for in respect of some of the goods in Class 9 and all of the services in Class 41. On the other hand, it granted the application for registration of the mark for the goods in Class 25 as well as for some of the goods in Class 9, namely ‘mouse mats and mouse pads; mobile phone accessories; sunglasses; computer hardware; computer chips and discs, interactive software as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs’.

11 On 13 April 2015, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), in that it allowed the mark applied for to be registered for the goods in Class 9, as described in paragraph 10 above, and for the goods in Class 25.

12 By decision of 21 March 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the intervener’s appeal in respect of the following goods in Class 9: ‘Computer hardware; computer chips and discs, interactive software as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs’.

13 However, it allowed the appeal in respect of the following goods, which were, therefore, refused registration:

– Class 9: ‘mouse mats and mouse pads; sunglasses; mobile phone accessories’;

– Class 25: ‘clothing, footwear, headgear; pique shirts; polo shirts; rugby shirts; shirts; sport shirts; sweat shirts; t-shirts; baseball caps; golf caps; knitted caps; shower caps; men’s and women’s jackets, coats, trousers; rain jackets; rainproof jackets; sweat jackets; track jackets; wind resistant jackets’ (‘the goods at issue’).

14 In paragraph 25 of the contested decision, the Board of Appeal observed that the appeal in the present case was closely related to the appeal which had given rise to Decision R 880/2015-5 of the Fifth Board of Appeal, also dated 21 March 2016 (‘Decision R 880’). In Decision R 880, the Board of Appeal adjudicated on the application of Article 8(4) of Regulation No 207/2009 and of the United Kingdom law relating to the tort of passing-off. The Board of Appeal found, therefore, that there was no need to revisit that issue in the context of the appeal in the present case, and it reproduced the findings set out in Decision R 880, in particular the findings that, after the applicant’s resignation from the band in 1993, the intervener and the current and succeeding members of Deep Purple had accrued significant goodwill (the attractive force which brings in custom) under the name Deep Purple and that registration of the mark applied for would be preventable by the intervener under the law of passing-off.

15 In paragraphs 29 to 40 of the contested decision, the Board of Appeal analysed whether the protection provided by the goodwill already established extended to the goods listed in paragraphs 12 and 13 above.

16 First, the Board of Appeal found that the evidence showed that clothing merchandise generated a significant revenue stream for the intervener over the relevant period and that merchandising was an essential part of the business of a rock band on tour. It added that it could reasonably be asserted that clothing merchandising belonged to the realms of common knowledge. It decided, therefore, that the sale of goods in Class 25 under the name Deep Purple could be prevented by the law of passing-off and that damage to the goodwill of the intervener was plausibly foreseeable by virtue of diversion of trade. In addition, given that it was common knowledge that many of the items in Class 9 were commonly decorated with commercial or personal imagery, and given the goodwill attaching to the name Deep Purple and the role that merchandising items have in relation to performing the function of a badge of declaration of allegiance or as memento for fans, the Board of Appeal decided that there would be misrepresentation and damage to that goodwill if the applicant marketed ‘mouse mats and mouse pads; mobile phone accessories’ under the name Deep Purple. Lastly, as regards sunglasses, the Board of Appeal found that they were sufficiently accessorised with clothing so as also to be considered at risk of misrepresentation (paragraphs 34 to 37 of the contested decision).

17 Secondly, as regards ‘computer hardware [and] computer chips and discs, interactive software as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs’ in Class 9, the Board of Appeal found that no evidence had been submitted that the band had been involved in trading those items. It also stated that those items fell into a category of goods that were not associated with music business merchandising in general and Deep Purple in particular. In the light of those considerations, the Board of Appeal was not prepared to extend its correction of the Opposition Division’s decision to those goods (paragraphs 37 to 40 of the contested decision).

18 In paragraphs 14 to 28 of the contested decision, the Board of Appeal adjudicated on the admissibility of the late evidence, namely that submitted after 2 February 2014. It decided that both the evidence submitted by the intervener in the context of his appeal before the Board of Appeal and that submitted by him on 5 November 2014 at first instance were admissible. Given that the circumstances of the appeal in the present case were no different from those of the appeal giving rise to Decision R 880, the Board of Appeal saw no objection to admitting the documents of 5 November 2014 to the appeal in the present case on the same basis (paragraph 26 of the contested decision).

21 The applicant puts forward four pleas in law in support of his action. By the first plea in law, he submits that the Board of Appeal was wrong to admit the evidence filed by the intervener after the deadline of 2 February 2014. By the second plea in law, he submits that the Board of Appeal was wrong to conclude that goodwill in the name Deep Purple had been proven to the requisite legal standard. By the third plea in law, he submits that the Board of Appeal was wrong to conclude that the intervener had adduced sufficient evidence to establish his entitlement to a share in any goodwill. By the fourth plea in law, he states that the Board of Appeal erred by refusing registration of the mark applied for in respect of the goods at issue.

22 Under Article 8(4) of Regulation No 207/2009, the proprietor of a non-registered trade mark may oppose the registration of an EU mark if that non-registered trade mark satisfies four conditions. The non-registered trade mark must be used in the course of trade; it must be of more than mere local significance; the right to that mark must have been acquired, pursuant to the law of the Member State in which the mark was used, prior to the date of application for registration of the EU trade mark; lastly, that mark must confer on its proprietor the right to prohibit the use of a subsequent trade mark.

23 Those conditions are cumulative, so that where a mark does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (judgment of 30 June 2009, Danjaq v OHIM Mission Productions (Dr. No), T‑435/05, EU:T:2009:226, paragraph 35).

24 Consequently, the intervener must demonstrate that the sign in question falls within the scope of application of the law of the Member State relied on and that it confers the right to prohibit the use of a subsequent trade mark (see, to that effect, judgment of 12 June 2007, Budějovický Budvar v OHIM — Anheuser-Busch (BUDWEISER), T‑53/04 to T‑56/04, T‑58/04 and T‑59/04, not published, EU:T:2007:167, paragraph 74).

25 In the present case, the pleas in law relied on by the applicant concern the Member State’s law applicable to the earlier mark, namely the United Kingdom Trade Marks Act 1994, Section 5(4) of which provides:

‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented: (a) by virtue of any rule of law (in particular, the law of passing-off) protecting an unregistered trade mark or other sign used in the course of trade …’

26 It is clear from Section 5(4) of the Trade Marks Act 1994, as interpreted by the national courts, that, in the present case, the intervener must establish, in accordance with the rules on passing-off under United Kingdom law, that the following three conditions are satisfied (see, to that effect, judgment of 11 June 2009, Last Minute Network v OHIM — Last Minute Tour (LAST MINUTE TOUR), T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 49 and the case-law cited).

27 First, there was goodwill attached to the goods or services offered by the intervener, in the mind of the relevant public by association with their get-up. That goodwill is to be established at the date on which the defendant in the action for passing-off began to offer his goods or services. However, according to Article 8(4) of Regulation No 207/2009 the relevant date is not that date, but the date on which the application for an EU trade mark was filed, since Article 8(4) requires that an intervener has acquired rights over its non-registered national mark before the date of filing, in this case 26 April 2013 (see, to that effect, judgment of 11 June 2009, LAST MINUTE TOUR, T‑114/07 and T‑115/07, EU:T:2009:196, paragraphs 50 and 51 and the case-law cited).

28 Secondly, the offering in the United Kingdom under the sign Deep Purple of goods and services identical to those of the intervener and of complementary goods and services would have constituted, on 26 April 2013, a misrepresentation, that is to say a representation likely to lead the relevant public to attribute the commercial origin of those goods and services to the intervener (see, to that effect, judgment of 11 June 2009, LAST MINUTE TOUR, T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 52).

29 Thirdly, the intervener is likely to suffer commercial damage as a result (see, to that effect, judgment of 11 June 2009, LAST MINUTE TOUR, T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 53).

30 In the present case, the second plea in law, alleging that the Board of Appeal was wrong to conclude that goodwill in the name Deep Purple had been sufficiently proven, concerns the first of those three conditions underlying the tort of passing-off, namely that relating to goodwill. The fourth plea in law, alleging that the Board of Appeal erred by refusing registration of the mark applied for in respect of the goods at issue, relates principally to the second of the three conditions underlying the tort of passing-off, namely that relating to misrepresentation.

The second plea in law, alleging that goodwill has not been sufficiently proven

31 First, the Court must examine the second plea in law which is divided into two parts. By the first part, the applicant submits that the Board of Appeal was wrong to conclude that goodwill in the name Deep Purple had been sufficiently proven by the evidence submitted by the intervener on 9 September 2013. By the second part of the plea, he submits that even if the evidence submitted out of time by the intervener were admissible, it would lack any probative value and would be insufficient to establish goodwill in the name Deep Purple.

32 As regards the first part of the plea, which relates to Annexes 3, 4 and 5 to the intervener’s letter of 9 September 2013, the applicant puts forward the following arguments.

33 The applicant maintains that Annex 3 contains a selection of press articles appearing in the United Kingdom, only one of which was published prior to the date of the application for registration of the mark applied for. Furthermore, those articles refer only to concerts that, in general terms, post-date that application. Since the law on passing-off requires the intervener to prove that goodwill existed prior to the date of application for registration of the mark applied for, evidence which post-dates it and only demonstrates trade in the United Kingdom after that application date is of little, if any, probative value.

34 The applicant states that Annex 4 contains a table with data on ticket sales for various concerts given by the band Deep Purple in Europe between 2003 and 2013. However, that table is not supported by any sworn and signed statement, nor by sales receipts. Moreover, the vast majority of ticket sales detailed in that annex relate to concerts that took place outside the United Kingdom, which is not relevant for the purposes of establishing goodwill.

35 As regards Annex 5, which contains 19 Deep Purple album covers from 1968 to 2013, the applicant submits that it does not constitute evidence of any trading activity in the United Kingdom, in that it is supported neither by an indication of the volumes sold in the United Kingdom, nor by sales receipts.

37 First of all, it must be noted that, in answer to a question from the Court at the hearing, the applicant stated that he disputed the contested decision in so far as, in paragraph 25 thereof, it reproduced the findings set out in Decision R 880 (see paragraph 14 above).

38 Next, it must be pointed out that the courts in the United Kingdom are very unwilling to assume that a business can have customers but no goodwill (Wadlow, C., The law of passing-off, Sweet and Maxwell, London, 2004, point 3-11, cited in the judgment of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 115, and Wadlow, C., The law of passing-off, Sweet and Maxwell, London, 2016, points 3-12 and 3-13).

39 In addition, goodwill is normally proved by evidence of, inter alia, trading activities, advertising and consumers’ accounts. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill (judgment of 9 December 2010, Golden Elephant Brand, T‑303/08, EU:T:2010:505, paragraph 102).

40 Lastly, it must be borne in mind that the Board of Appeal is required to carry out an overall assessment of all the evidence placed before EUIPO. It cannot be precluded 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 (see judgment of 9 December 2010, Golden Elephant Brand, T‑303/08, EU:T:2010:505, paragraph 106 and the case-law cited).

41 The applicant’s arguments must be assessed in the light of the foregoing considerations.

42 First, it must be found that, regardless of their date of publication, the press articles published in 2013 contained in Annex 3 prove that the band Deep Purple had an active and continuous presence in the United Kingdom during the period preceding the date of application for registration of the mark applied for. The argument relied on by the applicant at the hearing, that those articles are evidence of the band’s return after a prolonged absence, is unconvincing in view of the evidence showing the sale of concert tickets during the period from 2003 to 2013 (see paragraph 43 below). The applicant’s argument, also raised at the hearing, alleging that the intervener failed to state the circulation figures of the publications in question cannot succeed either, two of the articles in question having been published in national daily newspapers.

43 Secondly, it must be found that Annex 4, that is the list of concerts given by the band Deep Purple, shows the band’s commercial activity in the United Kingdom in the period preceding the date of the application for registration of the mark applied for. Although that list details a majority of concerts held outside the United Kingdom, it also mentions numerous concerts and ticket sales in that country between 2003 and October 2013, that is four concerts in 2003, seven in 2004, two in 2006, six in 2007, one in 2008, five in 2009, four in 2011 and five in 2013. That finding cannot be called into question by the applicant’s contention, raised at the hearing, that that evidence lacks probative value inasmuch as it does not indicate whether Deep Purple was the main attraction or an opening act, since the applicant has not adduced any evidence in support of that argument.

44 Thirdly, it must be found that Annex 5, that is the list of 19 albums recorded, released between 1968 and 2013, also shows that there was trading activity in the United Kingdom as at the date of application for registration of the mark applied for. The applicant’s argument that those albums were not sold in that country is implausible given the band’s fame there, shown by the press articles, and the fact that one of those articles refers to the sale of 100 million albums.

45 Fourthly, the applicant’s argument that the evidence in Annexes 4 and 5 has no probative value, on the ground that the intervener adduced no substantiating evidence such as invoices, sales receipts, ticket samples or advertising for the concerts, cannot be upheld. As was rightly found in paragraph 29 of Decision R 880, the press articles are independent proof that Deep Purple is a United Kingdom band which has enjoyed considerable popularity, at least in that territory.

46 The applicant’s contention that Annex 4 has no probative value in that it is not supported by any sworn and signed statement must also be rejected. Given that it was for the Board of Appeal to assess the evidence overall and that the press articles are independent proof, the applicant has not shown how the absence of such a statement could negate the value the Board of Appeal attached to the evidence assessed overall.

47 Lastly, it must be found, as EUIPO notes, that it is apparent from paragraph 30 of Decision R 880 that the evidence submitted on 9 September 2013 was supported by the evidence produced by the applicant himself on 2 June 2014, whose admissibility the applicant does not dispute.

48 The Court must, therefore, reject the first part of the second plea in law, which alleges that the Board of Appeal erred in concluding that goodwill in the name Deep Purple had been sufficiently proven by the evidence submitted by the intervener on 9 September 2013.

49 In those circumstances, the second part of the second plea in law, relating to the evidence submitted out of time, must be rejected as ineffective, since even if the evidence submitted out of time is not taken into account, goodwill has been established.

The first plea in law, alleging that the Board of Appeal was wrong to take into account the evidence submitted out of time

50 In the light of the considerations set out on examination of the second plea in law, and, in particular, the rejection of the first part of that plea, alleging that the Board of Appeal was wrong to conclude that goodwill in the name Deep Purple had been sufficiently proven by the evidence submitted by the intervener in good time, the Court must also reject as ineffective the first plea in law, alleging that the Board of Appeal was wrong to take into account the evidence filed out of time, in particular that submitted on 5 November 2014.

51 It must, however, be pointed out that, in his application, the applicant had maintained that the Board of Appeal had no discretion to take into account evidence submitted out of time. At the hearing, he acknowledged that the Board of Appeal had such discretion, but maintained instead that the Board of Appeal had erred in exercising that discretion in that it had not considered that the intervener could have submitted the evidence at issue in good time.

52 It must be stated that Regulation No 207/2009 expressly provides that when examining an appeal directed against a decision of the Opposition Division, the Board of Appeal enjoys the discretion deriving from the third subparagraph of Rule 50(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) and from Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001), in order 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 (judgment of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraph 33).

53 In addition, it is settled case-law that when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible (see judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraphs 23 to 26 and the case-law cited). In the present case, the intervener filed evidence within the time limit set; consequently, the evidence whose admissibility is challenged is supplementary evidence that may be capable of being taken into consideration.

54 It must, therefore, be determined whether the Board of Appeal correctly applied the criteria for admitting supplementary evidence. In that regard, it must be borne in mind that taking such evidence into account is likely to be justified where, first, the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the application brought before EUIPO and, secondly, the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 44).

55 In the present case, it is apparent from the contested decision that the Board of Appeal was fully entitled to find, in paragraph 32 of Decision R 880 and paragraph 26 of the contested decision, that the evidence in question was genuinely relevant to the outcome of the opposition. In addition, it must be found that the applicant has not shown that the stage at which that evidence was submitted and the circumstances surrounding that submission precluded it from being taken into account. In that regard, the Court points out that the parties agree that the applicant had the opportunity to comment on the additional evidence. Lastly, contrary to the applicant’s claims, the Board of Appeal was not required to consider whether the intervener could have submitted the evidence at issue within the time limit set, since that is a matter which fell within its discretion.

56 In the light of all those circumstances, the first plea in law must be rejected as both unfounded and ineffective.

The third plea in law, alleging insufficient evidence relating to the intervener’s share in any goodwill

57 In his application, the applicant submits that in order to establish that the intervener is entitled to a share in any goodwill, it is not enough for him merely to assert ownership of it. He must prove that the mark Deep Purple is distinctive of him. In order for his claim to succeed in this respect, the intervener would need to provide evidence of economic benefit accruing specifically to him from exploitation of that goodwill in the United Kingdom. None of the evidence filed in good time demonstrates the existence of a link between the intervener and any goodwill established in the earlier mark. Consequently, the Board of Appeal was wrong to accept that the intervener was at least entitled to a share of any goodwill.

58 At the hearing, the applicant reformulated the present plea in law, stating that he no longer maintained that the onus was on the intervener to prove that the mark Deep Purple was distinctive of him nor that the intervener had himself accrued economic benefit from exploitation of that goodwill. Instead, the applicant argued that the evidence available to the Board of Appeal to prove that the band Deep Purple was entitled to the economic benefit accruing from the goodwill was insufficient. The applicant also explained that he was relying on the decision of Geoffrey Hobbs QC, Intellectual Property Office, of 23 February 2010, Williams and Williams v Canaries Seaschool SLU (Club Sail Trade Marks) [2010] R.P.C. 32, which was included as an annex to the observations which EUIPO had received from the intervener on 9 September 2013.

59 It must be borne in mind that under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court pursuant to the first paragraph of Article 53 of that same statute, and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must, inter alia, contain a statement summarising the pleas relied on. It must, accordingly, specify the grounds on which the action is based, with the result that a mere abstract statement of the grounds is not sufficient to satisfy the requirements of the Statute of the Court of Justice of the European Union and the Rules of Procedure. Moreover, that summary — albeit concise — must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any further information. In order to ensure legal certainty and the sound administration of justice, it is necessary — if an action or, more specifically, a plea in law, is to be admissible — that the basic legal and factual particulars relied on be indicated coherently and intelligibly in the application itself (see, to that effect, judgment of 15 September 2016, TAO-AFI and SFIE-PE v Parliament and Council, T‑456/14, EU:T:2016:493, paragraph 149).

60 Consequently, the General Court is obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which the head of claim is based are not indicated coherently and intelligibly in the application itself. The failure to state such matters in the application cannot be compensated for by putting them forward at the hearing (see, to that effect, judgments of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraph 37, and of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT VODKA), T‑450/13, not published, EU:T:2015:841, paragraph 17).

61 It must be held that the present plea in law is set out in an abstract and incomplete manner in the application. The applicant has failed in particular to state the case-law on which he relied or how the evidence was insufficient. In addition, at the hearing, the applicant partially withdrew and reformulated that plea. Since the arguments relating to that plea do not satisfy the minimum requirements of Article 177(1)(d) of the Rules of Procedure, it is inadmissible.

The fourth plea in law, alleging that the Board of Appeal wrongly concluded that there was a likelihood of misrepresentation

62 By his fourth plea in law, the applicant submits that the Board of Appeal erred in refusing registration of the mark applied for in respect of a wider range of goods and services than was justified by the evidence. He claims that the evidence submitted on 9 September 2013 relates solely to live musical performances. The Board of Appeal erred in concluding that the protection of any goodwill in the name Deep Purple extended to the goods at issue, thereby acting as a bar to registration of the mark Deep Purple for those goods. In answer to a question from the Court at the hearing, the applicant stated that if the evidence filed out of time were to be held admissible, he maintained the present plea in law.

63 The applicant further submits that the goods at issue and the goods and services in respect of which the Board of Appeal found there to be goodwill are very dissimilar and that the threshold for showing that the use of the mark Deep Purple for the goods at issue would give rise to a likelihood of confusion on the part of a significant section of the public is, therefore, very high. The applicant states that the Board of Appeal was wrong to decide that the goodwill in the mark Deep Purple inevitably extended to the merchandise produced by rock bands.

64 Lastly, relying on the judgment of the High Court of Justice (England & Wales), Chancery Division (United Kingdom), Lyngstad v Anabas [1977] FSR 62, the applicant submits that there is a presumption that the public will not assume that the use of the image or name of a musical band indicates an economic connection with that band. In the applicant’s view, the onus was, therefore, on the intervener to show that the mark Deep Purple indicated an economic connection with the music band Deep Purple for a significant section of the public.

66 It must be found, as EUIPO notes, that there is no difference of opinion between the applicant and the Board of Appeal concerning the test to be applied in order to establish that there is a likelihood of misrepresentation. According to the case-law on the tort of passing-off, it must be ascertained whether there is a genuine likelihood that the relevant public will be led to attribute the commercial origin of the goods and services to the opponent. Where the goodwill in a name has been established for some goods and services and that name is then used for other goods or services, the existence of a likelihood of misrepresentation will be all the more difficult to prove where those goods and services are different. While a defendant in an action for passing-off need not be engaged in a common field of activity, the existence of a common field of activity is a relevant fact in the analysis of alleged misrepresentation (see Wadlow, C., The law of passing-off, Sweet & Maxwell, London, 2016, pp. 314 to 317).

67 In addition, it must be stated that the Board of Appeal assessed the likelihood of misrepresentation concerning the goods at issue by taking into account evidence lodged by the applicant and the intervener. It found that that evidence showed that clothing merchandise generated a significant revenue stream for the intervener and that merchandising was an essential part of the business of a rock band on tour. It substantiated that finding by referring to (i) the Opinion of Advocate General Ruiz-Jarabo Colomer in Arsenal Football Club (C‑206/01, EU:C:2002:373), who, in point 81 thereof, observed that one of the sources of income which had increased in importance in recent years was, in fact, that derived from the sale of goods related to the team, an activity commonly known as ‘merchandising’, and to (ii) the judgment of the High Court of Justice (England & Wales), Chancery Division in Robyn Rihanna Fenty and Others v Arcadia Group Brands Limited [2013] EWHC 2310 (Ch), in which that court acknowledged the importance of merchandising in the music industry. Although there was no evidence concerning the sale by the intervener’s band of the articles in Class 9, the Board of Appeal decided that ‘sunglasses’ were sufficiently accessorised with clothing and that ‘mouse mats and mouse pads; mobile phone accessories’ were items commonly decorated with commercial or personal imagery, so that there would be misrepresentation if the applicant marketed that category of items under the name Deep Purple.

68 Given that the Board of Appeal relied, first, on the evidence concerning the merchandising of clothing which corresponded to the goods at issue in Class 25 and, secondly, on the evidence concerning the importance of merchandising and on the proof of matters of common knowledge, the applicant’s unsubstantiated claim that the goods at issue are very dissimilar is unfounded. The same is true of the argument that the Board of Appeal decided that goodwill in the mark Deep Purple inevitably extended to the merchandising of rock bands.

69 The applicant’s argument based on the judgment in Lyngstad cited in paragraph 64 above, in which an application for an interlocutory injunction based on the tort of passing-off by the music group Abba was dismissed, cannot succeed either. First of all, that judgment dates from 1977, a period when the concept of merchandising was less developed. It was observed in that case that ‘there was no evidence that it was the custom for popular musicians to grant licences to make and sell [articles bearing pictures of themselves]’. It was also held that ‘there is no question that the plaintiffs themselves [Abba] or indeed [in the court’s view] any company connected with them, have at any time marketed in this country any of the articles to which the notice of motion refers’. Those factors distinguished that case from the present case with regard to two important issues of fact. Next, it is incorrect to consider that the judgment in question establishes a presumption that the public will not assume that the use of the image or name of a musical band indicates an economic connection with that band. Lastly, it must be pointed out that the applicant does not assert that that judgment calls into question the test set out in paragraph 66 above.

70 At the hearing, the applicant relied principally on the judgment of the Court of Appeal (England & Wales) (Civil Division) (United Kingdom) in Robyn Rihanna Fenty and Others v Arcadia Group BrandsLimited [2015] EWCA Civ 3, concerning the action for passing-off brought by the singer Rihanna against Topshop, which had sold a T-shirt bearing the singer’s photograph without her authorisation. The applicant stated that that action had exceptionally been upheld for two reasons, namely, first, the fact that Rihanna had previously been publicly associated with Topshop in the context of a promotional campaign and, secondly, the fact that the singer’s image that was used was similar to an image used for the promotion of one of her albums (paragraphs 61 and 63 of the judgment in question).

71 In that regard, it must be found that, in the present case, the applicant was associated with Deep Purple — like Rihanna was with Topshop — because of the fact that until 1993 he was a member of the band. In addition, the mark applied for is identical to the earlier mark. To that extent, it is not, therefore, proven that an action for passing-off by the intervener would not succeed.

72 Accordingly, the fourth plea in law must be rejected as unfounded and, consequently, the action must be dismissed in its entirety.

73 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. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO 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) >> Blackmore v EUIPO - Paice (DEEP PURPLE) (EU trade mark - Judgment) [2018] EUECJ T-344/16 (04 October 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T34416.html Cite as: ECLI:EU:T:2018:648, EU:T:2018:648, [2018] EUECJ T-344/16

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