McDreams Hotel v EUIPO - McDonald's International Property (mc dreams hotels Traumen zum kleinen Preis!) (EU trade mark - Judgment) [2019] EUECJ T-428/18 (10 October 2019)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark mc dreams hotels Träumen zum kleinen Preis! — Earlier EU word mark McDONALD’S — Article 8(5) of Regulation (EU) 2017/1001 — Family of marks — Taking unfair advantage of the distinctive character or repute of the earlier mark)

McDreams Hotel GmbH, established in Feldkirchen (Germany), represented by S. Schenk and S. Kleinmanns, lawyers,

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek and H. O’Neill, acting as Agents,

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

McDonald’s International Property Co. Ltd, established in Wilmington, Delaware (United States), represented by C. Eckhartt and K. Thanbichler-Brandl, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 18 April 2018 (Case R 972/2017-2), relating to opposition proceedings between McDonald’s International Property Co. and McDreams Hotel,

composed of S. Gervasoni (Rapporteur), President, K. Kowalik-Bańczyk and C. Mac Eochaidh, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 26 October 2018,

having regard to the response of the intervener lodged at the Court Registry on 6 November 2018,

1 On 26 October 2015, the applicant, McDreams Hotel GmbH, 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)).

3 The services in respect of which registration was sought are in Class 43 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: ‘Providing temporary accommodation’.

5 On 29 January 2016, the intervener, McDonald’s International Property Co. Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

– the EU word mark McDONALD’S, filed on 1 April 1996 and registered on 16 July 1999 under No 62 497, for goods and services in Classes 25, 28 to 32, 35, 41 and 42;

– the EU word mark McMISSION, filed on 4 July 2013 and registered on 28 November 2013 under No 11 955 929, for goods and services in Classes 9, 38 and 41;

– the EU word mark McINTERNET, filed on 11 October 2002 and registered on 24 March 2004 under No 2 888 402, for services in Classes 35, 38 and 43;

– the EU word mark McCOMPASS, filed on 12 June 2014 and registered on 13 October 2014 under No 12 982 658, for goods and services in Classes 9 and 43;

– the EU word mark McFAMILY, filed on 27 January 2012 and registered on 15 August 2012 under No 10 633 436, for services in Classes 35 and 38;

– the EU word mark McCAFE, filed on 28 April 2010 and registered on 1 September 2012 under No 9 062 118, for goods in Class 30;

– the EU word mark McWRAP, filed on 5 November 2009 and registered on 15 June 2010 under No 8 664 617, for goods and services in Classes 29, 30 and 43;

– the EU word mark BIG MAC, filed on 1 April 1996 and registered on 22 December 1998 under No 62 638, for goods and services in Classes 29, 30 and 42;

– the EU word mark McRIB, filed on 19 November 1999 and registered on 11 June 2001 under No 1 391 663, for goods in Classes 29 and 30;

– the EU word mark McMUFFIN, filed on 27 July 2005 and registered on 7 August 2006 under No 4 562 419, for goods and services in Classes 29, 30 and 43;

– the EU word mark McDOUBLE, filed on 11 March 2013 and registered on 23 July 2013 under No 11 642 519, for goods in Class 30;

– the EU word mark McBITES, filed on 21 September 2012 and registered on 30 January 2013 under No 11 205 093, for goods and services in Classes 29, 30 and 43;

– the EU word mark McCOUNTRY, filed on 22 February 2013 and registered on 3 July 2013 under No 11 596 442, for goods and services in Classes 29, 30 and 43;

– the EU word mark McTOAST, filed on 24 October 2005 and registered on 20 April 2007 under No 4 699 054, for goods and services in Classes 29, 30 and 43;

– the EU word mark McFISH, filed on 18 April 2006 and registered on 20 July 2007 under No 5 056 429, for goods in Classes 9 and 30;

– the EU word mark Mc, filed on 4 November 2011 and registered on 15 March 2012 under No 10 392 835, for goods and services in Classes 29, 30, 32 and 43;

– and the well-known German trade mark McDONALD’S, for goods in Classes 29, 30 and 32 and for restaurant services in Class 42.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5), respectively, of Regulation 2017/1001). Reputation was claimed for the EU word mark McDONALD’S in respect of the goods in Classes 29, 30 and 32, as well as the services in Class 42, now 43, corresponding to the following description: ‘Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation and provision of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.’

8 On 20 March 2017, the Opposition Division rejected the opposition in its entirety.

9 On 10 May 2017, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 18 April 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal and annulled the Opposition Division’s decision. Although it concluded, as did the Opposition Division, that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation 2017/1001, it considered that all the conditions for the application of Article 8(5) of that regulation were, in the present case, fulfilled.

11 In that regard, the Board of Appeal found that the earlier word mark McDONALD’S had a reputation, in particular, in respect of the services in Class 43, which the Board described as fast-food restaurant services (paragraphs 47 and 58 of the contested decision).

12 The Board of Appeal also noted that the intervener owned a family of marks in relation to fast-food establishments that was defined by the prefix ‘mc’. It added that that prefix had acquired a high degree of distinctive character through use on the fast-food market when combined with a generic term denoting a food (for example, in the marks McFISH, McMUFFIN, McRIB, McTOAST and McWRAP) or with a descriptive characteristic of a foodstuff (for example, in the marks McDOUBLE, McBITES and McCOUNTRY) (paragraphs 16, 17, 48, 49 and 58 of the contested decision).

13 Since the main, dominant and most distinctive element of the mark applied for was, in the Board of Appeal’s view, ‘mc dreams’, it held that the mark applied for fitted very well into the intervener’s family of marks (paragraphs 49 and 58 of the contested decision).

14 The Board of Appeal also found that the marks at issue were similar (paragraphs 32 to 34, 40 and 59 of the contested decision).

15 Furthermore, it found that the services at issue were clearly similar to a certain degree (paragraphs 29 and 60 of the contested decision).

16 On the basis of the earlier mark’s outstanding reputation, particularly for fast-food restaurant services, and the certain degree of similarity between the marks at issue and the services at issue, the Board of Appeal concluded that the unfair advantage taken by the mark applied for of the earlier mark’s repute lay in the fact that the relevant public, that is to say, the general public of the European Union, could be attracted by the mark applied for, which reproduces the structure of the earlier mark and the marks belonging to the intervener’s family of marks, which would lead that public to purchase the services marketed by the applicant (paragraphs 13, 23, 58 and 59 of the contested decision).

17 Lastly, the Board of Appeal considered that the applicant had not demonstrated the existence of due cause for the use of the mark applied for (paragraph 62 of the contested decision).

21 The applicant relies on two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation 2017/1001, the second alleging infringement of Article 8(5) of that regulation.

22 At the hearing, in answer to a question put by the Court, the applicant withdrew its first plea in law, and formal note of that withdrawal was taken in the minutes of the hearing.

23 In any event, that plea must be rejected as ineffective since, in the contested decision, the Board of Appeal did not base the annulment of the Opposition Division’s decision and the refusal of the application for registration on the provisions of Article 8(1)(b) of Regulation 2017/1001, but rather solely on those of Article 8(5) of that regulation (see paragraph 10 above).

24 As regards the second plea in law, it must be borne in mind that, under Article 8(5) of Regulation No 2017/1001, the mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier trade mark, that mark is an EU trade mark which has a reputation in the European Union and where 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.

25 In order for an earlier trade mark to be afforded that broader protection under Article 8(5) of Regulation No 2017/1001, a number of conditions must be satisfied. First, the earlier mark must be registered. Secondly, the earlier mark and the mark applied for must be identical or similar. Thirdly, the earlier mark, when this is an EU mark, must have a reputation in the European Union. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the latter mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render Article 8(5) of Regulation No 2017/1001 inapplicable (judgment of 6 July 2012 in Jackson International v OHIM — Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, paragraph 18; see, to that effect, judgment of 5 July 2016, Future Enterprises v EUIPO — McDonald's International Property (MACCOFFEE), T‑518/13, EU:T:2016:389, paragraph 15 and the case-law cited).

26 In the present case, the applicant puts forward three complaints: the first alleging that there is no relevant similarity between the marks at issue; the second alleging that there is no proximity between the services at issue; and the third alleging that there is no advantage taken of the earlier mark’s repute.

27 The applicant’s complaints can be grouped into two branches: (i) the dispute as to the existence of a link between the marks at issue and (ii) the dispute as to the existence of unfair advantage being taken of the earlier mark’s repute.

28 The applicant also relies on a further complaint alleging lack of distinctive character of the prefix ‘mc’ and the absence of any likelihood of confusion. Although that complaint — which seeks to demonstrate the absence of any likelihood of confusion — is ineffective since it is connected to the applicant’s first plea in law, the arguments that the complaint brings together will be examined in so far as they may be relevant for the purposes of demonstrating an infringement of Article 8(5) of Regulation 2017/1001.

29 The types of injury referred to in Article 8(5) of Regulation No 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier mark with a reputation and the mark applied for, as a result of which the relevant public makes a connection between those two marks, that is to say, establishes a link between them, even though it does not confuse them. It is not therefore necessary that the degree of similarity between the earlier mark with a reputation and the mark applied for is such that there exists a likelihood of confusion on the part of the relevant public. It is sufficient that the degree of similarity between the mark with a reputation and the mark applied for establishes a link between those marks (judgment of 1 March 2018, Shoe Branding Europe v EUIPO — adidas(Position of two parallel stripes on a shoe), T‑629/16, EU:T:2018:108, paragraph 29). Thus, even a lesser degree of similarity does not in itself allow Article 8(5) of Regulation 2017/1001 to be disapplied (see, to that effect, judgment of 20 November 2014, Intra-Presse v Golden Balls, C‑581/13 P and C‑582/13 P, not published, EU:C:2014:2387, paragraphs 72 to 77).

30 The existence of the link referred to in paragraph 29 above, together with the existence of a likelihood of confusion, must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue, the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 56, and of 5 July 2016, MACCOFFEE, T‑518/13, EU:T:2016:389, paragraph 37).

31 It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question. This is why the level of attention of that public is also a relevant factor for the assessment of whether there is a link between the marks at issue (judgment of 1 March 2018, Position of two parallel stripes on a shoe, T‑629/16, EU:T:2018:108, paragraph 31).

32 In the present case, first of all, the applicant disputes the degree of similarity between the signs found by the Board of Appeal. It submits that the dominant characteristic of the mark applied for stems from its overall image, in which ‘mc’ merely plays a secondary role. It also states that the element ‘mc’ is not a dominant or distinctive element of the mark applied for.

33 Secondly, the applicant claims that the presence in a mark of the prefix ‘mc’ is capable of establishing a link between that mark and the marks belonging to the intervener’s family of marks only for foodstuffs or catering products but not for other goods or services, including hotel services.

34 Thirdly, the applicant disputes the degree of similarity between the services at issue.

35 It is necessary first to examine each of those arguments, then to determine whether, in the context of the global assessment which it must carry out (see paragraph 30 above), the Board of Appeal could rightly find that there was a sufficient link between the marks at issue for the provisions of Article 8(5) of Regulation 2017/1001 to apply.

36 As a preliminary point, it should be observed that the Board of Appeal rightly found that the relevant public consisted of the public at large of the European Union and that that public’s level of attention was average (paragraph 23 of the contested decision), which, moreover, is not disputed by the applicant.

37 It should be noted that the existence of a similarity between the earlier mark and the mark applied for is a precondition for the application of both Article 8(1)(b) and Article 8(5) of Regulation No 2017/1001. That precondition requires, in the context of Article 8(1)(b) and Article 8(5) of Regulation No 2017/1001, the existence, in particular, of elements of visual, phonetic or conceptual similarity. Admittedly, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) of Regulation 2017/1001 or under Article 8(5) (see judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 to 54).

38 Furthermore, it should be noted that two marks are similar where, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects. The global assessment of a link between the marks at issue (see paragraph 37 above) must, so far as concerns the visual, phonetic or conceptual similarity of those signs, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 5 July 2016, MACCOFFEE, T‑518/13, EU:T:2016:389, paragraph 21; see also, to that effect, judgment of 22 February 2018, International Gaming Projects v EUIPO — Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 22 and the case-law cited).

39 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 23 and the case-law cited).

40 The public will not generally consider a descriptive element forming part of a word mark to be the distinctive and dominant element of the overall impression it conveys. In that regard, according to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 24 and the case-law cited).

41 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark. It follows that the determination of the dominant character of an element within a composite trade mark depends on a fact-based assessment of the various elements that go to make up the sign and is therefore not dependent on the nature of the sign in question, that is to say, on whether it is a figurative sign or a word sign (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 25 and the case-law cited).

42 It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 26 and the case-law cited).

43 It should also be borne in mind that, where some elements of a mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see, to that effect, judgment of 22 February 2018, TRIPLE TURBO, T‑210/17, not published, EU:T:2018:91, paragraph 27 and the case-law cited).

44 It is in the light of the foregoing considerations that it is necessary to examine the applicant’s first argument relating to the degree of similarity of the marks at issue (see paragraph 32 above).

45 The mark applied for consists of a yellow, rectangular label with rounded corners, on which there appears an element made up of the phrases ‘mc’ and ‘dreams’ one beneath the other in lower-case letters, with the upright of the ‘d’ in ‘dreams’ rising in front of ‘mc’. Beneath the element ‘mc dreams’, the word ‘hotels’ appears in smaller characters, separated by the white image of a shooting star.

46 Under the yellow label referred to in paragraph 45 above, a sentence in German, ‘Träumen zum kleinen preis!’ (‘sweet dreams at low prices’) appears in even smaller letters than those forming the word ‘hotels’.

47 All the letters in the mark applied for are written in a burgundy shade of red.

48 It should be pointed out that the element ‘mc dreams’ is in larger characters than the element ‘hotels’. In addition, the latter element is descriptive of the services in respect of which registration is sought. Moreover, the sentence ‘Träumen zum kleinen preis!’, which is in even smaller characters, does not appear on the yellow label referred to in paragraph 45 above, which makes it less perceptible at a first glance for the relevant public. Lastly, the shooting star, which is in a neutral colour — white — is an accessory element, the essential function of which appears to be to underline the element ‘mc dreams’ which, having regard to the foregoing considerations, is dominant.

49 The element ‘mc dreams’ is similar in part to the single element of the earlier mark, namely ‘mcdonald’s’, on account of the presence of the prefix ‘mc’ in both elements.

50 It should be recalled that the prefix ‘mc’ in the mark applied for does not include any particular stylisation which might be capable of differentiating it from that prefix in the earlier mark (see paragraph 45 above).

51 As regards the applicant’s argument that the prefix ‘mc’ in the mark applied for is made up of lower-case letters, whereas the letter ‘m’ is capitalised in the earlier mark, it should be noted that the earlier mark is a word mark. A word mark is a mark 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 3 December 2015, TrekStor v OHIM — Scanlab (iDrive), T‑105/14, not published, EU:T:2015:924, paragraph 59 and the case-law cited).

52 Consequently, it is immaterial for the purposes of the visual comparison of the signs that, in the earlier mark, as registered, the letter ‘m’ appears as a capital letter.

53 Moreover, it is appropriate to take into account the fact that the phrases ‘dreams’ and ‘donald’s’ begin and end with the same consonants, ‘d’ and ‘s’.

54 It follows from the foregoing that, despite the numerous elements that are specific to the mark applied for (see paragraphs 45 to 47 above), the Board of Appeal rightly found, in paragraph 32 of the contested decision, that there was a low degree of visual similarity between the two marks at issue.

55 It should, first of all, be recalled that the word ‘hotels’ in the mark applied for will not be given the same attention as the element ‘mc dreams’, on account of its small size and descriptive character. As to the sentence ‘träumen zum kleinen preis!’, that will not be understood by the non-German-speaking public and will be of limited significance, including for the German-speaking public, on account of its small size and the fact that it does not appear on the yellow label in the contested sign (see paragraph 48 above).

56 It is therefore likely that the average consumer will, most often, refer to the mark applied for by pronouncing the element ‘mc dreams’ only.

57 Consequently, the sounds of the single element of the earlier mark, namely ‘mcdonald’s’, must be compared principally with the sounds of the element ‘mc dreams’.

58 Aside from a part of the relevant public — in particular, that which comprises speakers whose mother tongue is English — the letters ‘mc’ will be pronounced in the same way for both marks, as the Board of Appeal rightly found in paragraph 33 of the contested decision. That will be the case, in particular, for the German-speaking public. Moreover, the relevant public — in particular, the German-speaking public — will also pronounce the letters ‘d’ and ‘s’ in the same way for both marks.

59 Thus, the elements referred to in paragraph 57 above coincide in their first syllable and in the fact that the words ‘dreams’ and ‘donald’s’ begin and end in the same consonants, ‘d’ and ‘s’.

60 In view of the foregoing, it must be held that the signs are phonetically similar to an average degree which, moreover, the applicant has not disputed.

61 The Board of Appeal found, in paragraph 34 of the contested decision, that the signs were conceptually similar. It observed that the element ‘mc’ would be perceived by the English-speaking part of the relevant public as the prefix of a Gaelic surname, which might further be identified as meaning ‘son of’, but that that element carried no particular meaning for the rest of the relevant public. The Board of Appeal further stated that ‘in their remaining parts the signs differ[ed]’, since the word ‘dreams’ would be understood as ‘an imaginary series of events someone experiences in his mind while he is asleep’, whereas the word ‘donald’s’ would be perceived as a name.

62 In view of those assessments, which are not disputed by the applicant, it can be concluded, bearing in mind the dominance of the element ‘mc dreams’ in the mark applied for (see paragraphs 48 and 55 above), that there is a low degree of conceptual similarity between the marks at issue, which, moreover, the applicant has also not disputed.

63 In the light of the considerations set out in the preceding paragraphs, it must be held that there is a low degree of overall similarity between the two marks at issue.

64 The applicant argues that there are numerous marks, particularly marks registered in respect of hotel services, which begin with the prefix ‘mc’. It adds that the public does not attribute overriding importance to the prefix ‘mc’ in sectors other than the fast-food sector.

65 As observed in paragraph 30 above, the existence, from the point of view of the public concerned, of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case. One of the relevant factors in that regard is the existence of a family of earlier marks. Where the opposition is based on the existence of several previous marks possessing common characteristics which make it possible for them to be regarded as part of a family, the establishment, on the part of the public concerned, of a link between the mark applied for and the earlier marks may result from the fact that the former has characteristics capable of associating it with the family consisting of the latter (see judgment of 5 July 2016, MACCOFFEE, T‑518/13, EU:T:2016:389, paragraph 42 and the case-law cited).

66 Several marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ when, inter alia, they reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark (see judgment of 5 July 2016, MACCOFFEE, T‑518/13, EU:T:2016:389, paragraph 43 and the case-law cited).

67 However, the relevant public cannot be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family, to detect common characteristics in such a family and to establish a link between that family and another trade mark containing elements that are similar to those characteristics. Therefore, for the relevant public to establish a link between a trade mark in respect of which a declaration of invalidity is sought and a ‘family’ of earlier trade marks, the earlier marks forming part of that family must be present on the market (see judgment of 5 July 2016, MACCOFFEE, T‑518/13, EU:T:2016:389, paragraph 44 and the case-law cited).

68 In the present case, it should be observed that it is not disputed by the applicant that the intervener holds a family of marks, linked to the fast-food sector, which share a structure composed of the prefix ‘mc’ followed by the generic name, in English, of a food or a descriptive characteristic of a foodstuff.

69 Furthermore, the applicant does not dispute, in its written submissions, the presence on the market of several marks belonging to that family, as was found by the Opposition Division and then by the Board of Appeal, on the basis of documents submitted by the intervener, such as printed copies taken from various of the latter’s websites, as well as menus and packaging used in several Member States of the European Union.

70 It should next be observed that the fact that the prefix ‘mc’ is used in marks other than those held by the intervener does not serve to establish that that prefix is devoid of distinctive character.

71 Moreover, it is apparent from market research surveys, to which the contested decision refers (paragraphs 6 and 20), that the prefix ‘mc’ has acquired a high degree of distinctiveness through its use on the fast-food market, which the applicant concedes, moreover, in paragraph 79 of the application.

72 Furthermore, in the judgment of 5 July 2016, MACCOFFEE (T‑518/13, EU:T:2016:389, paragraphs 59 to 63), the Court has already found that the prefix ‘mc’ was largely associated with the sign McDONALD’S and that, combined with the name of a menu item or foodstuff, it had acquired its own distinctiveness in relation to fast-food restaurant services and goods on the menu of fast-food establishments, with the result that that prefix was capable of characterising the existence of a family of marks.

73 It is true that the word ‘dreams’ is not the generic name of a foodstuff product or a descriptive characteristic of a foodstuff product.

74 However, the structure of the element ‘mc dreams’ — which is the dominant element in the mark applied for (see paragraph 48 above) — is, at least in part, similar to that of the intervener’s family of marks, since it includes the prefix ‘mc’ followed by a name in English.

75 Thus, that common structure, which itself is not decisive for the purposes of determining the existence of a link between the marks at issue, reinforces the likelihood of such a link in the mind of the relevant public.

76 As noted in paragraph 11 above, the Board of Appeal found that the earlier mark was well known for services in Class 43, which it described as fast-food services.

77 At the time when the earlier mark was registered, the services at issue were in Class 42 and not, as is currently the case, in Class 43 which now includes, inter alia, serving food and drinks. However, such a circumstance is irrelevant to the examination of the similarity of the services at issue.

78 Moreover, as the Board of Appeal rightly noted, when endorsing the Opposition Division’s assessment (paragraph 28 of the contested decision), the services of providing temporary accommodation in respect of which registration is sought may include services providing food and drink for guests. The services referred to in paragraph 76 above include providing food and drinks.

79 All of the services referred to in paragraph 78 may therefore coincide in the provider and target the same clientele.

80 Moreover, the services covered by the mark applied for and those covered by the earlier mark could be offered through the same distribution channels to the same public by the same undertakings.

81 Furthermore, when services providing temporary accommodation do not include providing a kitchen in which guests can prepare their own meals, food and drinks are often offered as well as accommodation services, with the effect that fast-food services and the services designated by the mark applied for must be viewed as belonging to adjacent market segments.

82 It follows from the foregoing that there is, at the very least, a significant degree of closeness between those services within the meaning of the case-law referred to in paragraph 30 above (judgment of 16 May 2007, La Perla v OHIM — Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T‑137/05, not published, EU:T:2007:142, paragraph 51).

83 It should be added that the applicant’s argument that it offers hotel services which do not include services providing food or drink, is irrelevant. In order to assess the similarity between the services at issue, the group of services protected by the marks at issue must be taken into account and not the services that are actually marketed under those marks (judgment of 16 June 2010, Kureha v OHIM — Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, point 71).

84 It should first be noted that the Board of Appeal found, in essence, that the reputation of the earlier mark was exceptional, which, moreover, is not disputed by the applicant.

85 Having regard to the exceptional nature of the reputation of the earlier mark, the average level of attention of the relevant public, the existence of a degree of similarity between the marks at issue and the significant degree of closeness between the services at issue, as well as the existence of a family of marks, the structure of which is reproduced, at least in part, by the mark applied for, the Board of Appeal rightly concluded in the present case that the relevant public would establish a link between the marks at issue (paragraphs 49 to 51 and 59 of the contested decision), even though the intervener did not offer any form of accommodation or hotel services.

86 It should be added that, while the applicant relies on the existence of national trade marks which include the element ‘mc’ and are registered, in particular, in the hotel sector, it should be recalled that the EU trade mark regime is an autonomous system, with its own set of objectives and rules peculiar to it, and that it applies independently of any national system. Accordingly, EUIPO and, as the case may be, the Courts of the European Union are not bound by decisions given in the Member States finding that identical or comparable signs are registrable as national trade marks (see judgment of 23 October 2015, Hansen v OHIM (WIN365), T‑264/14, not published, EU:T:2015:803, paragraph 30 and the case-law cited; judgment of 6 June 2019, Ortlieb Sportartikel v EUIPO (Representation of an octagonal polygon), T‑449/18, not published, EU:T:2019:386, paragraph 38).

87 The first branch of the second plea in law relied on by the applicant must therefore be rejected (see paragraph 27 above).

The lack of any unfair advantage taken of the reputation of the earlier mark

88 It should be recalled that the advantage arising from the use by a third party of a sign which is similar to a mark with a reputation is an advantage taken unfairly by that third party of the repute of that mark where that party seeks to ride on the coat-tails of the mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image (judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 50).

89 The concept of the unfair advantage taken of the repute of the earlier mark by the use without due cause of the mark applied for concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (judgment of 19 June 2008, Mülhens v OHIM — Spa Monopole (MINERAL SPA), T‑93/06, not published, EU:T:2008:215, paragraph 40).

90 In the present case, according to the Board of Appeal, the relevant public would associate the mark applied for with the image of reliability, efficiency, low-cost services and, on that account, choose it instead of the services provided by its competitors. The mark applied for would therefore ride on the coat-tails of the earlier mark in order to benefit from the power of attraction, the reputation and the prestige of that mark. The economic advantage would therefore consist, for the applicant, of exploiting the effort expended by the intervener in order to establish the reputation and the image of its earlier mark, without paying any compensation in exchange.

91 In order to call those assessments into question, the applicant confines itself to stating that the services at issue are different, the marks at issue are not identical and the relevant trade circles do not associate the mark applied for with the services covered by the intervener’s trade mark.

92 The first two arguments are unfounded (see points 63 and 82 above). As regards the third argument, it should be recalled that the relevant public is made up of the general public of the European Union (see paragraph 36 above). To that extent, the argument relied on by the applicant is ineffective. Those arguments do not, therefore, serve to call into question the convincing findings reached by the Board of Appeal and reproduced in paragraph 90 above.

93 Furthermore, as noted by the Board of Appeal in paragraph 58 of the contested decision, the mark applied for uses a combination of colours which is similar, although not identical, to that most frequently used by the intervener. Such a circumstance may, as is the case here, be relevant for the purposes of reinforcing the finding that the use without due cause of the mark applied for would take unfair advantage of the repute of the earlier trade mark (see, to that effect, judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 41).

94 In that connection, while the applicant, without claiming infringement of the principle of equal treatment, relies on the registration of two EU trade marks which include the prefix ‘mc’ — namely the figurative mark containing the words ‘mc cruise’, registered under No 3 546 686, and the figurative mark containing the words ‘mc travel’, registered under No 9 413 881 — it can be stated, in any event, that those marks, in addition to being substantially different to the mark applied for (no letter ‘d’ following the prefix ‘mc’ and presence of figurative elements which are not purely ancillary), use at least one colour prominently — namely blue and green, respectively — which is not found in the combination of colours most frequently used by the intervener.

95 Moreover, it should be observed that, even assuming, as the applicant argues, that the relevant public associates the mark applied for with the idea of low prices, linked both to the supposedly thrifty nature of the Scottish and the sentence ‘träumen zum kleinen preis !’ (‘sweet dreams at low prices’), such a notion would not be far removed from the idea of low-cost meals that can be conveyed by the mark McDONALD’S.

96 Lastly, in any event, it should be recalled that it is possible, particularly in the case of an opposition based on a mark, such as the earlier mark, with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment to or unfair advantage being taken of the mark cited in opposition by the mark applied for is so obvious that the opposing party does not need to put forward and prove any other fact to that end (judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 48).

97 It follows from the foregoing that the second branch of the second plea in law relied on by the applicant must be rejected (see paragraph 27 above).

98 Since the applicant has not, moreover, disputed the Board of Appeal’s finding that the applicant had failed to provide any valid justification for the use of the mark applied for, the Board rightly considered that the conditions under which Article 8(5) of Regulation 2017/1001 applies had been met.

99 Consequently, the plea alleging infringement of Article 8(5) of Regulation 2017/1001 must be rejected and the action must be dismissed in its entirety.

100 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.

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

2. Orders McDreams Hotel GmbH to bear its own costs and pay those of the European Union Intellectual Property Office (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) >> McDreams Hotel v EUIPO - McDonald's International Property (mc dreams hotels Traumen zum kleinen Preis!) (EU trade mark - Judgment) [2019] EUECJ T-428/18 (10 October 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T42818.html Cite as: [2019] EUECJ T-428/18, EU:T:2019:738, ECLI:EU:T:2019:738, [2020] ETMR 4

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