JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
15 September 2016 (*)
(EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark Roméo has a Gun by Romano Ricci — Earlier EU word marks NINA RICCI and RICCI — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or reputation of the earlier marks — Damage to reputation — Article 8(5) of Regulation No 207/2009)
In Case T‑359/15,
Arrom Conseil, established in Paris (France), represented by C. Herissay Ducamp and J. Blanchard, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. Kunz, acting as Agent,
defendant,
the other party in the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Nina Ricci SARL, established in Paris (France), represented by E. Armijo Chávarri, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 13 April 2015 (Case R 1021/2014-1) relating to opposition proceedings between Nina Ricci SARL and Arrom Conseil,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 July 2015,
having regard to the response of EUIPO lodged at the Court Registry on 14 September 2015,
having regard to the response of the intervener lodged at the Court Registry on 30 September 2015,
having regard to the fact that no application for a hearing was submitted by the parties within the period of three weeks from notification of closure of the written procedure and having decided, pursuant to Article 106(3) of the Rules of Procedure of the General Court, to rule without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 17 September 2012, the applicant, Arrom Conseil, lodged 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).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services for which registration was sought are in, inter alia, Classes 3, 25 and 35 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Soaps; Perfumes; Ethereal oils; Cosmetics; Hair lotions; Dentifrices; Depilatories; make-up removing preparations; Lipsticks; Beauty masks; Preparations for shaving; Leather preservatives (polishes); Waxes for leather’.
– Class 25: ‘Clothing; Footwear; Headgear for wear; Shirts; Clothing made from leather or imitation leather; Belts (clothing); Furs (clothing); Gloves (clothing); Scarfs; Neckties; Hosiery; Socks; Slippers; Beach shoes; Ski boots or sports shoes; Underwear’.
– Class 35: ‘Presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing; Dissemination of advertising matter; Publicity columns preparation; Commercial information and advice for consumers [consumer advice shop]; Shop window dressing; Distribution of samples; Demonstration of goods; Organization of exhibitions for commercial or advertising purposes; Management (Computerized file -); Modelling and models for advertising or sales promotion; Opinion polling; Public relations; Auctioning’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 212/2012 of 7 November 2012.
5 On 7 February 2013, the intervener, Nina Ricci, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– EU word mark No 3 540 333 NINA RICCI, filed on 31 October 2003 and registered on 6 April 2005, protecting the goods listed below:
– Class 25: Clothing, footwear, headgear, shirts, clothing of leather or of imitation leather, belts (clothing), furs (clothing), gloves (clothing), scarves, neckties, hosiery, socks, underwear, swimwear.
– EU word mark No 8 161 770 RICCI, filed on 22 November 2007 and registered on 13 November 2009, protecting the goods listed below:
– Class 25: ‘Clothing, footwear, headgear’.
7 The grounds relied upon in support of the opposition were those referred to in Article 8(1)(b) and 8(5) of Regulation No 207/2009.
8 On 13 February 2014, the Opposition Division rejected the opposition.
9 On 11 April 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 13 April 2015 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal in part. In particular, it held that the relevant public consisted of average consumers who were well informed and reasonably observant and circumspect for all the goods and services at issue, except for ‘auctioning services’, in respect of which the relevant public comprised businesses and companies, which had a higher degree of attention.
11 As regards the comparison of the marks at issue, the Board of Appeal began by making a comparison between the earlier word mark RICCI and the mark applied for. It described each of the marks at issue and their components, on the basis of which it then concluded that there was a certain visual and phonetic similarity between the marks since the earlier mark RICCI was entirely reproduced in the mark applied for.
12 As regards the conceptual comparison, the Board of Appeal noted that consumers with an understanding of English would perceive the mark applied for as containing a reference to the person Romano Ricci, who was responsible for the creative work ‘Roméo has a Gun’. It took into consideration the fact that that meaning was given by the preposition ‘by’, which is commonly used in English to designate the ownership of a creative work. Furthermore, the Board of Appeal considered that the title of a work was presented before the name of the person and given prominence, as in the present case, with larger letters and a decoration surrounding the title. In view of those considerations, the Board of Appeal concluded that the marks at issue were conceptually similar for consumers who would perceive the earlier mark RICCI as a name.
13 Thus, the Board of Appeal concluded that the marks at issue were similar overall.
14 As regards the goods and services at issue, the Board of Appeal made a comparison between the goods and services covered by the mark applied for and the goods covered by the earlier mark RICCI within Class 25.
15 As regards the comparison of the goods and services at issue designated by the mark applied for, the Board of Appeal held that the goods ‘Clothing, footwear, headgear, shirts, clothing of leather or of imitation leather, belts (clothing), furs (clothing), gloves (clothing), scarves, neckties, hosiery, socks, underwear, swimwear’, included in Class 25, were all included in the category ‘Clothing, footwear, headgear’ of the earlier mark RICCI and, therefore, those goods were identical.
16 The Board of Appeal considered that the degree of similarity between the goods of the mark applied for included in Class 3 and the goods of the earlier mark RICCI included in Class 25 was very low and arose from the fact that fashion houses had diversified into perfumery and launched perfumes bearing the same marks as their clothing or footwear. It noted that the reputation of the earlier mark RICCI had not been relied upon.
17 The Board of Appeal also considered that there was a certain degree, albeit low, of similarity between the services of ‘presentation of goods on communication media, for retail purposes of footwear and clothing’ included in Class 35 designated by the mark applied for and the same goods included in Class 25 covered by the earlier mark RICCI.
18 However, it held that there was no similarity between the services within Class 35, ‘Presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations’ and the intervener’s goods included in Class 2, considering that the latter were different from the goods that were the subject of those services.
19 The other services included in Class 35 were held to be different from the goods covered by the earlier mark RICCI.
20 As regards the likelihood of confusion, the Board of Appeal found that there was a likelihood of confusion in respect of identical and similar goods and services due to the overall similarities between the marks at issue.
21 The Board of Appeal found that there could be no likelihood of confusion for services regarded as different, which fell within Class 35. Likewise, it found that there was no likelihood of confusion in respect of the services of the mark applied for included in Class 3 and the services ‘presentation of goods on communication media, for retail purposes of footwear and clothing’ included in Class 35, which were found to be similar, to a low degree, to the goods covered by the earlier mark RICCI.
22 As regards Article 8(5) of Regulation No 207/2009, the Board of Appeal considered that the application for goods within Class 3 and services of ‘Presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing’ included in Class 35 must be rejected on the basis of the opposition based on the earlier mark NINA RICCI which enjoyed a reputation in the European Union for clothing.
23 The Board of Appeal held that the goods in Classes 3 and 25 designated in the application and the services of ‘Presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing’ and ‘Commercial information and advice for consumers [consumer advice shop]’ were of interest to the general public.
24 The relevant public for those goods, the Board of Appeal held, was made up of average consumers, who were reasonably well informed and reasonably observant and circumspect. The relevant public for the other services covered by the application was comprised of businesses and undertakings.
25 The Board of Appeal found that the relevant public for the goods covered by the earlier mark NINA RICCI was made up of average consumers, who are reasonably well informed and reasonably observant and circumspect.
26 The Board of Appeal then held that there was a low degree of similarity between the marks within the meaning of Article 8(5) of Regulation No 207/2009. The Board took account of the fact, in particular, that the marks at issue both included the word element ‘ricci’. It took into account the evidence provided by the intervener and considered that the reputation of the earlier mark NINA RICCI for ‘clothing’ was such that the EU public would establish a link between the marks at issue, despite the presence of additional elements in the mark applied for. That link was, according to the Board of Appeal, all the more likely owing to the fact that the mark applied for covered the goods included in Classes 3 and 25 and the services of ‘Presentation of goods on communication media for retail purposes’ for goods that complemented, or were identical to, the goods for which the earlier mark NINA RICCI enjoyed a reputation. Furthermore, the Board of Appeal observed that there was a high degree of synergy between ‘cosmetics, perfumes, clothing, footwear and accessories’, which were all sold under the same mark by prestige fashion houses, such as the intervener, from their own retail stores.
27 According to the Board of Appeal, there was a romantic connection between the marks at issue and it was not inconceivable that the mark applied for could take unfair advantage of the repute of the earlier mark NINA RICCI.
28 Furthermore, for the Board of Appeal, the message conveyed by ‘a man with a gun’ would clearly be incompatible with the classical image and notions of femininity, sweetness, nature and happiness of the earlier mark NINA RICCI. The mark applied for would therefore be likely to be detrimental to the repute of the earlier mark NINA RICCI.
29 It was also held that the applicant had not demonstrated that there was due cause for the use of the mark applied for.
30 Consequently, the Board of Appeal held that the opposition was well founded under Article 8(5) of Regulation No 207/2009 as regards all the goods included in Classes 3 and 25 and some of the services included in Class 35. By contrast, in so far as it had concluded that certain services included in Class 35 were completely different, the Board of Appeal held that it was unlikely that the mark applied for would take unfair advantage of the earlier mark NINA RICCI or have a detrimental effect on its reputation or distinctive character.
Forms of order sought
31 The applicant claims that the Court should:
– partially annul the contested decision to the extent that it refused the application for an EU trade mark for goods within Classes 3 and 25 and for the services of ‘presentation of goods on communication media for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing’ within Class 35, and ordering the parties to bear their own costs incurred in both the opposition proceedings and the appeal proceedings;
– confirm the contested decision in so far as it rejected, for the remainder of the services in Class 35, the appeal brought against the application for registration of an EU trade mark;
– order EUIPO to pay the costs.
32 EUIPO, supported by the intervener, contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
33 The applicant raises two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and the second alleging infringement of Article 8(5) of that regulation.
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
34 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
35 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003, Laboratorios RTB v OHMI — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
36 It should be noted first of all that the Board of Appeal correctly defined the relevant public (the general public, businesses and undertakings) and its level of attention (reasonably well informed and circumspect or presenting a higher level of attention) and the relevant territory as that of the European Union, matters which, moreover, have not been contested by the parties.
37 Likewise, the Board of Appeal’s analysis at paragraphs 39 to 43 of the contested decision, according to which the goods at issue are either identical, similar to varying degrees, or different from the goods designated by the earlier mark RICCI, which, moreover, has also not been contested by the parties, must be held to be correct.
38 However, the existence of a likelihood of confusion resulting from the similarity of the signs is contested by the applicant.
Comparison of the signs
39 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
40 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 41 and the case-law cited). 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
41 The applicant alleges, in essence, that the Board of Appeal assessed the similarity between the signs at issue by taking into consideration ‘only’ what it considered to be the ‘dominant’ element of the mark applied for, namely, the word element ‘by romano ricci’ and that the Board of Appeal, in so doing, underestimated the impact of the word element ‘roméo has a gun’ and the figurative element in the form of a floral garland. According to the applicant, it is those additional elements that dominate the overall impression, and not the element ‘by romano ricci’. The applicant acknowledges that the marks at issue overlap in respect of the element ‘ricci’ but overall the difference between the marks at issue are sufficiently great to ‘counteract’ the similarity resulting from the simple reproduction of the earlier mark RICCI in the mark applied for. That was the case visually, phonetically and conceptually to the extent that the relevant public’s attention would be drawn more towards the additional word and figurative elements of the mark applied for.
42 EUIPO, supported by the intervener, disputes the applicant’s arguments.
43 First of all, it must be noted that the earlier mark, RICCI, is composed of the single word element ‘ricci’, which cannot be broken down, whilst the mark applied for is made up of seven words and a figurative element.
44 Having regard to the position and considerably greater size of the four first words in the mark applied for, those words will be read together as the word element ‘roméo has a gun’. That effect is reinforced by the fact that that word element is surrounded by the figurative element which forms a floral garland. The last three words placed below, written in a stylised font suggesting a signature, together form the word element ‘by romano ricci’.
45 First of all, it must be held that the applicant is wrong to allege that the Board of Appeal founded its comparison between the signs at issue only on the basis of the word element ‘by romano ricci’, overlooking the additional figurative and word elements. In fact, the Board of Appeal took into account all the figurative and word elements of the mark applied for when comparing the signs. The Board of Appeal held, in paragraph 31 of the contested decision, that a ‘substantial’ part of the contested mark was occupied by the additional figurative (a very decorative and floral arrangement of lines) and word (‘roméo has a gun’) elements. Next, in the same paragraph of the contested decision, it took into consideration the fact that the additional word elements of the contested mark were visually striking. Then, the Board of Appeal made a comparison between the two word elements of the mark applied for, concluding that, although the first word element was striking, the second would attract the relevant public’s attention further, because it gave further meaning, as an indicator of source, to the first word element. It follows that the Board of Appeal did not conclude that the word element dominating the mark applied for was the word element ‘by romano ricci’, contrary to the applicant’s submissions.
46 The applicant’s arguments that the dominant element of the mark applied for is ‘roméo has a gun’ owing to its initial position and its greater size in relation to the word element ‘by romano ricci’ must be rejected as well. It must be considered, in that regard, that the relevant public would not give its attention only to the first word element of the mark applied for, but would seek to supplement it, inasmuch as it gave the impression of the title of, or citation from, an artistic work. The word element ‘by romano ricci’ thus has the effect, as the Board of Appeal stated in paragraph 31 of the contested decision, of giving further meaning to the first word element of the earlier mark RICCI, which confers on it an independent distinctive position. Furthermore, it must be held that EUIPO is correct in submitting that it is usual in the field of fashion as regards personal care items and high fashion clothing to refer to the designer or source of a product, using the same format as that used by the mark applied for. In that field, the designer or source of a product, in particular, is likely to play a more important role for the relevant public than as regards other categories of goods. In view of those considerations, the word element ‘romano ricci’ is of such a nature as to be perceived as the mark of the house, whilst the element ‘roméo has a gun’ will be perceived as the sign identifying a particular line of goods or services amongst a wider range of goods and services offered by the applicant.
47 Having regard to the foregoing, the marks at issue are visually similar, since the mark applied for reproduces in its entirety the earlier mark RICCI. The additional elements of the mark applied for do not create sufficient differences to displace that similarity.
48 From a phonetic point of view, it is also necessary to find that the marks are similar. It must be held that the word element ‘by romano ricci’, having a distinctive independent position at the heart of the mark applied for, would be given a certain degree of importance by the relevant public, and that they would remember it.
49 As regards the conceptual comparison, the finding made by the Board of Appeal, in paragraph 35 of the contested decision, that consumers who understand English would perceive the mark applied for as containing a reference to the person Romano Ricci, who is the author of the creative work ‘Roméo has a Gun’, must be upheld. That meaning is conveyed by the preposition ‘by’, used in English to designate the person who is the proprietor of a creative work. Furthermore, the title of a work is presented before the name of the person and is given greater importance, as in the present case, with larger letters and a decoration surrounding the title. It follows that the marks are conceptually similar for the relevant public, who also perceive the earlier mark RICCI as a name.
The likelihood of confusion
50 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame) and Others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
51 The applicant considers that the Board of Appeal erred in concluding that there was a likelihood of confusion on the basis of the same arguments as those set out in paragraph 41 above. The applicant also recalls that the intervener accepted coexistence with another mark, namely, STEFANO RICCI, which shows that there is no likelihood of confusion.
52 EUIPO, supported by the intervener, disputes the applicant’s arguments.
53 It must be held that the similarities between the marks at issue confer upon them an overall similarity despite the additional elements in the mark applied for. Thus, having regard to the principle of interdependence, the Board of Appeal was fully entitled to conclude, in paragraph 45 of the contested decision, that there was a likelihood of confusion between the marks at issue for the goods in question that had been found to be identical.
54 Nor, for those reasons, did the Board of Appeal err in finding, in paragraph 46 of the contested decision, that there was no risk of confusion for the goods and services in question, which had been found to be different. That was also true for the Board of Appeal’s finding, in paragraph 47 of the contested decision, that there was no likelihood of confusion in respect of the services of the mark applied for included in Class 3 and the services of ‘presentation of goods on communication media, for retail purposes of footwear and clothing’ included in Class 35, which were found to be similar, to a low degree, to the goods covered by the earlier mark RICCI.
55 The low degree of similarity between, on the one hand, those goods and services and, on the other hand, the goods covered by the earlier mark RICCI and the additional elements in the mark applied for preclude the likelihood of confusion between the marks at issue.
56 As regards the argument that there was no risk of confusion because the intervener had accepted the existence of the mark STEFANO RICCI, it must be recalled that, according to the case-law, it was not wholly inconceivable that, in certain cases, the coexistence of earlier marks on the market might diminish the likelihood of confusion found by the EUIPO adjudicating bodies between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning the examination of the relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (judgments of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82, and of 11 May 2005, Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, EU:T:2005:169, paragraph 86). The applicant’s arguments in that regard must be rejected, given that none of the conditions laid down by the case-law is satisfied, in particular the condition that the marks in respect of which coexistence is relied upon must be identical.
57 It follows that the first plea must be rejected as unfounded.
Second plea in law: infringement of Article 8(5) of Regulation No 207/2009
58 Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2 of that article, the mark applied for is also to be refused registration where it is identical or similar to the earlier mark and where it is to be registered for goods and services which are not similar to those for which the earlier mark is registered, when, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trademark has a reputation in the Member States concerned and where the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
59 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the 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 earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).
60 As regards, more specifically, the fourth of those conditions for the application of Article 8(5) of Regulation No 207/2009, it must be recalled that unfair advantage has been taken of the distinctive character or the repute of the earlier mark where there is an attempt at clear exploitation and free-riding on the coat-tails of a famous mark (see judgment of 11 December 2014, Coca-Cola v OHIM — Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 82, and the case-law cited), and that there is, therefore, a reference to the concept of ‘the risk of free-riding’. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (see judgment of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 82 and the case-law cited).
61 The risk of free-riding is different from, on the one hand, ‘the risk of dilution’, the notion that detriment to the distinctive character of the earlier mark is usually established where the use of the mark applied for would have the effect that the earlier mark would no longer be capable of arousing immediate association with the goods for which it is registered and used, and, on the other hand, ‘the risk of tarnishment’, the notion that detriment to the repute of the earlier mark is usually established where the goods for which the mark applied for is used would appeal to the public’s senses in such a way that the earlier mark’s power of attraction would be diminished thereby (see judgment of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 83 and the case-law cited).
62 According to settled case-law, a finding of a risk of free-riding may, like a finding of a risk of dilution or a risk of tarnishment, be established, in particular, on the basis of logical deductions resulting from an analysis of the probabilities — so long as they are not mere suppositions — and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case (judgment of 14 November 2013, Environmental Manufacturing v OHIM, C‑383/12 P, EU:C:2013:741, paragraph 43; see also judgment of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 84 and the case-law cited).
63 The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).
64 In the present case, the Board of Appeal held, in paragraph 48 of the contested decision, that the application for the goods included in Classes 3 and 25 and the services ‘presentation of goods on communication media for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing’ included in Class 35 must be rejected under Article 8(5) of Regulation No 207/2009 on the basis of the opposition founded on the earlier mark NINA RICCI which had a reputation in the European Union.
65 The applicant contests the finding by the Board of Appeal that the mark applied for would take unfair advantage and that it would be detrimental to the distinctive character or repute of the earlier mark NINA RICCI.
66 EUIPO, supported by the intervener, disputes the applicant’s arguments.
67 First, the Board of Appeal’s finding, in paragraph 55 of the contested decision, that the goods covered by the application that are included in Classes 3 and 25 are of interest to a substantial part of the general public must be upheld. The relevant public for those goods is made up of average consumers, who are reasonably well informed and reasonably observant and circumspect. The relevant public for the other services covered by the application is comprised of businesses and undertakings. The public concerned by the goods of the earlier mark NINA RICCI, which covers, in particular, clothing, is made up of average consumers, who are reasonably well informed and reasonably observant and circumspect. Moreover, those points are not disputed by the parties.
68 It is also necessary, having regard to the case-file, to confirm the Board of Appeal’s finding in paragraph 73 of the contested decision that the earlier mark NINA RICCI enjoys a reputation for ‘clothing’ falling within Class 25, a matter which is also not disputed by the parties.
69 Likewise, having regard in particular to the presence of the word element ‘ricci’ in the mark applied for and in the earlier mark NINA RICCI, conferring on those marks a low degree of visual, phonetic and conceptual similarity, the Board of Appeal was fully entitled to consider that the marks at issue were, at least, slightly similar. In that regard, the Board of Appeal did not err in finding that the relevant public was likely to make a connection between the two marks due to the reputation of the earlier mark NINA RICCI and that the mark applied for covered goods contained in Classes 3 and 25 and the services of ‘Presentation of goods on communication media for retail purposes’ for goods that complement, or are identical to, the goods for which the earlier mark NINA RICCI had a reputation. As the Board of Appeal emphasised, there is a degree of synergy between ‘cosmetics, perfumes, clothing, footwear and accessories’, which are all sold under the same mark by prestige fashion houses, such as the intervener, from their own retail stores. Moreover, those points are not disputed by the parties.
70 Having regard to the foregoing, it is necessary to examine whether the Board of Appeal erred in finding that the mark applied for would take unfair advantage of the earlier mark NINA RICCI, and would be to the detriment of its distinctive character or repute.
The allegation that there was no likelihood of unfair advantage
71 The applicant submits that the Board of Appeal committed an error in considering mere suppositions to be sufficient to determine that there was a risk of unfair advantage.
72 EUIPO, supported by the intervener, disputes the applicant’s arguments.
73 In order to determine whether the use of the contested sign takes unfair advantage of the distinctive character or the repute of the earlier trade mark, a global assessment must be made that takes into account all factors relevant to the circumstances of the case, which include the strength of the reputation and the degree of distinctive character of the earlier mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned (see judgment of 14 December 2012, Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), T‑357/11, not published, EU:T:2012:696, paragraph 38 and the case-law cited).
74 In the present case, first, the Board of Appeal took into consideration the low degree of similarity between the marks at issue, which is not contested by the parties.
75 Second, it is common ground between the parties that the earlier mark NINA RICCI has a reputation in the European Union. It is clear from paragraphs 69 to 77 of the contested decision that the Board of Appeal based that finding on numerous pieces of evidence produced by the applicant, such as numerous market surveys carried out in several Member States of the European Union, extracts from fashion magazines and cuttings from newspapers published in European Union Member States.
76 Third, the Board of Appeal took account of the proximity between the services and the goods in question (see paragraph 69 below).
77 Having regard to those considerations, the Board of Appeal found that the earlier mark NINA RICCI enjoyed a reputation in the European Union as a mark conveying floral, romantic and classical concepts. On the basis of evidence produced by the intervener, the Board of Appeal found that, apart from the reproduction of the family name ‘ricci’, the mark applied for conveyed, in the same way as the earlier mark NINA RICCI, floral and romantic concepts. The Board of Appeal observed, in that regard, that it could not be excluded that the application for the mark applied for in respect of the goods in Classes 3 and 25 and the services of ‘presentation of goods on communication media, for retail purposes of soap, perfumery, fragrances, essential oils, cosmetics, hair and body lotions, make-up and beauty preparations, shaving preparations, footwear and clothing’, would take unfair advantage of the reputation of the earlier mark ‘NINA RICCI’ for goods in Class 25.
78 Thus, contrary to the applicant’s submissions, the Board of Appeal made a global assessment of the circumstances of the case and based its findings not on mere suppositions, but on evidence provided by the intervener, when concluding that there was a risk that use of the mark applied for would take unfair advantage of the reputation of the earlier mark NINA RICCI, within the meaning of Article 8(5) of Regulation No 207/2009.
79 Furthermore, as regards the argument that the Board of Appeal did not give the applicant an opportunity to exercise its right to be heard when finding that there was a romantic connotation in the mark applied for, EUIPO correctly contends that the applicant itself perceives the contested mark to make a reference, at least to a certain extent, to the romantic universe of Shakespeare. In any event, the findings of the Board of Appeal adopted in that regard constitute its final position, and the right to be heard does not apply in that respect. The Board of Appeal is not required to inform the parties of its legal opinion before giving a decision, or to give them the opportunity to make observations on that position (judgment of 20 March 2013, Bimbo v OHIM — Café do Brasil (Caffè KIMBO), T‑277/12, not published, EU:T:2013:146).
80 Consequently, the first plea in law must be rejected as unfounded.
81 Since the Board of Appeal thus properly applied Article 8(5) of Regulation No 207/2009, on grounds of a risk of unfair advantage being obtained by use of the mark applied for, the Court considers that it is not necessary to examine the risk that use of the mark applied for could be to the detriment of the repute or distinctive character of the earlier mark NINA RICCI.
Due cause
82 Where the proprietor of the mark with a reputation has demonstrated the existence of one of the forms of injury referred to in Article 8(5) of Regulation No 207/2009 and, in particular, has shown that unfair advantage has been taken of the distinctive character or the repute of that mark, the onus is on the third party using a sign similar to the mark with a reputation to establish that he has due cause for using such a sign (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 39).
83 In the present case, the Board of Appeal concluded, in paragraph 95 of the contested decision, that neither the fact that the element ‘ricci’ could be perceived as a common surname in Italy, nor the fact that the earlier right coexisted in Europe with the mark STEFANO RICCI, as the applicant submitted, constituted due cause within the meaning of Article 8(5) of Regulation No 207/2009.
84 The applicant submits that there is due cause for the registration and use of the contested mark due to the fact that Romano Ricci is the name of its legal representative and founder. Furthermore, the applicant states that Mr Romano Ricci is a direct descendent of Ms Nina Ricci.
85 EUIPO, supported by the intervener, disputes the applicant’s arguments and contends that those arguments are inadmissible because they were not raised before the adjudicating bodies of EUIPO.
86 The intervener submits that the evidence that the applicant relies upon in support of its arguments, namely, an extract ‘K bis’ from register of its companies and extracts of pages from the internet site ‘juliettehasagun.com’, are also inadmissible, given that they were presented for the first time before the Court.
87 The applicant’s arguments must be rejected as unfounded without it being necessary to rule on the question of the admissibility of those arguments and the evidence relied upon in support of them. EUIPO is correct to contend that neither Regulation No 207/2009 nor the case-law provides any unconditional right to the registration of a surname or first name as an EU trade mark (judgments of 25 May 2011, Prinz von Hannover v OHIM (Representation of a coat of arms), T‑397/09, not published, EU:T:2011:246, paragraph 29, and of 22 January 2015, Tsujimoto v OHIM — Kenzo (KENZO), T‑322/13, not published, EU:T:2015:47, paragraph 47). It must also be observed that the applicant does not advance any arguments explaining how a relationship could constitute due cause for registration of the mark applied for.
88 It follows that the second plea in law, and therefore the action in its entirety, must be rejected without it being necessary to examine the admissibility of the head of claim under which the applicant seeks confirmation of the contested decision in respect of certain goods in Class 35 covered by the mark applied for.
Costs
89 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.
90 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.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Arrom Conseil to bear its own costs and pay the costs incurred by the European Union Intellectual Property Office and Nina Ricci SARL.
Delivered in open court in Luxembourg on 15 September 2016.
[Signatures]