ibunal
General de la Unión Europea
Sentencia.
Luxemburgo, 5 de julio de 2016.
Asunto
T-518/13 Future Enterprises / EUIPO
I
- COMENTARIO
Las
marcas notorias o notoriamente conocidas son las más pirateadas,
parodiadas, a las que más se “arriman” los competidores.
Evidentemente son las que tienen mayor presencia en la mente del
consumidor.
Entre
estas, McDonald's es, universalmente, una de las más frecuentemente
objeto de todo este tipo de infracciones. La titular del derecho
tiene una actitud de vigilancia constante, naturalmente, y fruto de
ellos son numerosas sentencias en muchísimos países del mundo donde
han debido llevar el conflicto a los Tribunales. Se imaginan que
Europa no es la excepción, más bien todo lo contrario dado el nivel
de mercado de consumo que representan.
De
allí la importancia de esta actuación que tuvo lugar en el ámbito
de las entidades europeas competentes en la observancia de la
Propiedad Intelectual, concretamente de las marcas. En una reciente
sentencia, que abajo acompañamos en lengua inglesa (al momento de
este comentario todavía no está la traducción al español), se
deja en claro que la notoriedad de las marcas de McDonald’s
“permite impedir el registro, en relación con los productos
alimenticios o las bebidas, de marcas que combinan el prefijo «Mac»
o «Mc» con el nombre de un producto alimenticio o de una bebida”,
tal como explican en la nota de prensa correspondiente.
Se
trata de una liitis que se origina en 2008, cuando la sociedad Future
Enterprises, de Singapur, solicitó el registro de la marca de la
Unión MACCOFFEE para productos alimenticios y bebidas. La actual
EUIPO (Oficina de Propiedad Intelectual de la Unión Europea, antes
OAMI) la aceptó en 2010. Entonces McDonald’s solicitó la nulidad
de dicha marca invocando como anterioridad su marca McDONALD’S y
otras doce mñas, registradas en el mismo ámbito territorial. En
todos los casos se trató de la inclusión de los elementos
denominativos «Mc» o «Mac» como prefijos.
En
2013, la actual EUIPO hizo lugar al reclamo de McDonald’s, sobre la
base la reputación de la marca McDONALD’S para servicios de
restauración y del vínculo que el público podía establecer entre
las marcas controvertidas. Evidentemente el uso que Future
Enterprises hiciera de dicha marca podía gererarle un
aprovechamiento de la notoriedad de la marca McDONALD’S y
similares.
No
queda ahí el tema y Future Enterprises solicita al Tribunal General
de la Unión Europea que anule la resolución de la EUIPO. El
pronunciamiento del Tribunal, que hoy comentamos, desestima el
recurso de Future Enterprises y confirma la resolución de la EUIPO.
Se
destacan los siguientes argumentos en dicha sentencia.
1
Que las marcas enfrentadas, MACCOFFEE y las de McDonald’s,
presentan cierto grado de similitud en los planos fonético y
conceptual, derivada del prefijo.
2
Se validan las apreciaciones de la EUIPO en relación con la
combinación de “mac” y la bebida café, en ambos casos de las
marcas enfrentadas, dirigidas a una misma actividad comercial, el
público puede hacer una fuerte asociación con la marca notoria
“McDonalds” porque conoce sus prestaciones. La estructura de las
marcas enfrentadas es similar.
3
No puede soslayarse la estrecha relación entre los servicios
prestados por las empresas enfrentadas, dado los productos ue
utilizan, por más que puedan estar dirigidos a nichos distintos del
mercado: helados cremosos, molletes, bocadillos rellenos y sándwiches
tostados, se presentan comercialmente con marcas específicas en
McDonald's asociadas notoriamente con los propios productos. Además,
se dirigen a los mismos consumidores.
4
Se confirma también a la EUIPO en tanto el uso sin justa causa de
MACCOFFEE genera una ventaja desleal de la notoriedad de las marcas
de McDonald’s, porque comparten similar espacio de mercado.
Habrá
que ver si en días siguientes (60 días de plazo) se presenta recurso de casación ante
el Tribunal de Justicia, que sólo podría estar limitado a las
cuestiones de Derecho.
II
- TEXTO DE LA SENTENCIA.
Se
encuentra en su idioma original de trámite.
JUDGMENT
OF THE GENERAL COURT (First Chamber)
(European
Union trade mark — Invalidity proceedings — European
Union word mark MACCOFFEE — Earlier European Union word mark
McDONALD’S — Article 53(1)(a) and Article 8(5) of
Regulation (EC) No 207/2009 — Family of marks —
Taking unfair advantage of the distinctive character or repute of the
earlier mark — Declaration of invalidity)
In
Case T 518/13,
Future
Enterprises Pte Ltd, established in Singapore (Singapore),
represented initially by B. Hitchens, J. Olsen, R. Sharma,
M. Henshall, Solicitors, and R. Tritton, Barrister, and
subsequently by B. Hitchens, J. Olsen, R. Tritton and
E. Hughes-Jones, Solicitor,
applicant,
v
European
Union Intellectual Property Office (EUIPO), represented by
L. Rampini, acting as Agent,
defendant,
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, lawyer,
ACTION
brought against the decision of the First Board of Appeal of EUIPO of
13 June 2013 (Case R 1178/2012-1) relating to cancellation
proceedings between McDonald’s International Property Co. and
Future Enterprises,
THE
GENERAL COURT (First Chamber),
composed
of H. Kanninen, President, I. Pelikánová (Rapporteur) and
E. Buttigieg, Judges,
Registrar:
A. Lamote, Administrator,
having
regard to the application lodged at the Court Registry on
23 September 2013,
having
regard to the statements in response of EUIPO and the intervener
lodged at the Court Registry on 22 January 2014,
having
regard to the reply lodged at the Court Registry on 1 July 2014,
having
regard to the rejoinder of the intervener lodged at the Court
Registry on 24 November 2014,
further
to the hearing on 2 February 2016,
gives
the following
Judgment
Background
to the dispute
1 On
13 October 2008, the applicant, Future Enterprises Pte Ltd,
filed an application for registration of a European Union trade mark
at the European Union Intellectual Property Office (EUIPO), in
accordance with Council Regulation (EC) No 40/94 of 20 December
1993 on the Community trade mark (OJ 1994 L 11, p. 1), as
amended (replaced by Council Regulation (EC) No 207/2009 of
26 February 2009 on the European Union trade mark (OJ 2009 L 78,
p. 1)).
3 The
goods in respect of which registration was sought are in Classes 29,
30 and 32 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
29: ‘Meat, fish, poultry and game; meat extracts; preserved,
frozen, dried and cooked fruits and vegetables; jellies, jams,
compotes; eggs, milk and milk products; edible oils and fats; dairy
products; cream (dairy products); whipped cream; preparations for use
in creaming beverages (dairy based); dairy puddings; yoghurt;
foodstuffs in the form of snack foods; fruit-based snack foods;
potato-based snack foods; potato crisps in the form of snack foods;
beverages made from or containing milk; milk shakes’;
– Class
30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial
coffee; flour and preparations made from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking-powder; salt,
mustard; vinegar, sauces (condiments); spices; ice; cookies;
breakfast cereal; frozen confections; crackers; frozen yoghurt; ice
cream; pretzels; confectionery chips; sugar confectionery; candy;
candy bars; candy mints; chocolate; chocolate confectionery; cakes;
muffins; popcorn; cereal based snack foods; prepared savoury
foodstuffs in the form of snack foods; corn chips; tortillas;
pastries; bread; filled sandwiches; wraps (sandwiches); toasted
sandwiches; dessert puddings; instant coffee; instant coffee mix;
coffee beans; coffee in ground form; iced coffee; coffee beverages
with milk; cocoa beverages with milk, chocolate-based beverages,
coffee and coffee-based beverages, cocoa and cocoa-based beverages;
tea-based beverages; tea, namely, ginseng tea, black tea, oolong tea,
barley and barley-leaf tea; fruit teas; herbal tea (other than for
medicinal use); iced tea’;
– Class
32: ‘Beers; mineral and aerated waters and other non-alcoholic
drinks; fruit drinks and fruit juices; syrups and other preparations
for making beverages; fruit-based soft drinks flavoured with tea or
coffee (not included in other classes); non-alcoholic beverages with
tea or coffee flavour (not included in other classes)’.
4 The
European Union trade mark application was published in Community
Trade Marks Bulletin No 1/2009 of 12 January 2009
and the word sign MACCOFFEE was registered as a European Union trade
mark on 29 January 2010 under No 7307382 for all the goods
listed in paragraph 3 above.
5 On
13 August 2010, the intervener, McDonald’s International
Property Co. Ltd, brought an application for a declaration of
invalidity of the contested trade mark, for all of the goods in
respect of which that trade mark had been registered.
– European
Union word mark McDONALD’S, lodged on 1 April 1996 and
registered on 16 July 1999 under No 62 497, for the
goods and services in classes 29, 30, 32 and 42;
– European
Union word mark McFISH, lodged on 18 April 2006 and registered
on 20 July 2007 under No 5 056 429, for the goods
in classes 29 and 30;
– European
Union word mark McTOAST, lodged on 24 October 2005 and
registered on 20 April 2007 under No 4 699 054,
for the goods and services in classes 29, 30 and 43;
– European
Union word mark McMUFFIN, lodged on 27 July 2005 and registered
on 7 August 2006 under No 4 562 419, for the
goods and services in classes 29, 30 and 43;
– European
Union word mark McRIB, lodged on 19 November 1999 and registered
on 11 June 2001 under No 1 391 663, for the goods
in classes 29 and 30;
– European
Union word mark McFLURRY, lodged on 30 June 1998 and registered
on 8 September 1999 under No 864 694, for the goods in
class 29;
– European
Union word mark CHICKEN McNUGGETS, lodged on 1 April 1996 and
registered on 4 August 1998 under No 16 196, for the
goods in class 29;
– European
Union word mark McCHICKEN, lodged on 1 April 1996 and registered
on 2 February 1998 under No 16 188, for the goods in
class 30;
– European
Union word mark EGG McMUFFIN, lodged on 1 April 1996 and
registered on 19 December 1997 under No 15 966, for
the goods in class 30;
– European
Union word mark McFEAST, lodged on 1 April 1996 and registered
on 27 October 1999 under No 15 941, for the goods in
class 30;
– European
Union word mark BIG MAC, lodged on 1 April 1996 and registered
on 22 December 1998 under No 62 638, for the goods and
services in classes 29, 30 and 42;
– European
Union word mark PITAMAC, lodged on 1 February 2005 and
registered on 11 April 2006 under No 4 264 818,
for the goods and services in classes 29, 30 and 42;
– the
well-known German trademark McDonald’s, for the goods and services
in classes 29, 30, 32 and 43.
7 The
grounds relied on by the intervener were those referred to in
Article 53(1)(a) of Regulation No 207/2009, read in
conjunction with Article 8(1)(a) and (b), Article 8(2)(c)
and Article 8(5) of that Regulation.
8 At
the request of the applicant, proprietor of the contested trade mark,
the intervener was asked to furnish proof of genuine use of the
earlier trade marks on which the intervener based its application, in
accordance with Article 57(2) and (3) of Regulation No 207/2009.
9 By
decision of 27 April 2012, the Cancellation Division declared
the contested trade mark to be invalid in its entirety, pursuant to
Article 53(1)(a) of Regulation No 207/2009, read in
conjunction with Article 8(5) of that regulation, and it did so
solely on the basis of the earlier European Union word mark
McDONALD’S, registered under No 62 497, on the ground
that, given the long-standing reputation acquired by the McDONALD’S
trade mark and the establishment, on the part of the relevant public,
of a link between that and the contested trade mark, there was a
serious likelihood that use, without due cause, of the contested
trade mark would take unfair advantage of the reputation of the
McDONALD’S trade mark.
10 On
26 June 2012, the applicant filed an appeal with EUIPO, pursuant
to Articles 58 to 64 of Regulation No 207/2009, against the
decision of the Cancellation Division.
11 By
decision of 13 June 2013 (‘the contested decision’), the
First Board of Appeal of EUIPO dismissed the applicant’s appeal in
its entirety, concurring, in essence, with the Cancellation
Division’s argument that all the conditions for the application of
Article 8(5) of Regulation No 207/2009 were, in the present
case, fulfilled. In that regard, it noted that the McDONALD’S trade
mark enjoyed a considerable reputation for fast-food restaurant
services. In the context of the relevant factors that make it
possible to assess whether the relevant public, namely the general
public within the European Union, who also made use of the
intervener’s fast-food restaurant services, could establish a link
between the trade marks at issue, the Board of Appeal found (i) that
the trade marks at issue were similar, (ii) that the considerable
reputation acquired by the McDONALD’S trade mark also extended to
the combination of the prefix ‘mc’ with the name of a menu item
or foodstuff, (iii) that the intervener was the proprietor of a
family of trade marks, which combined the prefix ‘mc’ with the
name of a menu item or foodstuff (‘the “Mc” family of trade
marks’), (iv) that the contested trade mark reproduced the
structure common to the ‘Mc’ family of trademarks and (v) that
the services and goods covered by the trade marks at issue had a
certain degree of similarity owing to the close links existing
between them. After assessing all of those factors, the Board of
Appeal came to the conclusion that the relevant public could mentally
establish a link between the conflicting trade marks and even, for a
large part of that public, associate the contested trade mark with
the ‘Mc’ family of trade marks. In the view of the Board of
Appeal, the establishment of such a link, on the part of the relevant
public, could entail a transfer of the image of the McDONALD’S
trade mark or the characteristics associated with that trade mark to
the goods covered by the contested trade mark, such that it was
highly probable that the applicant took unfair advantage of the
reputation of the McDONALD’S trade mark. Lastly, the Board of
Appeal noted that the use of the contested trade mark was without due
cause.
Forms
of order sought
– annul
the contested decision;
– order
EUIPO to pay the costs.
– dismiss
the action;
– order
the applicant to pay the costs.
Law
Preliminary
remarks on the legal framework and the subject-matter of the
proceedings
14 Pursuant
to Article 53(1)(a) of Regulation No 207/2009, a European
Union trade mark is to be declared invalid, on application to EUIPO,
inter alia where there is an earlier trade mark, within the meaning
of Article 8(2) of that regulation, namely a trade mark with a
date of application for registration which is earlier than that of
the European Union trade mark whose cancellation is sought, and the
conditions set out in Article 8(5) of that regulation are
fulfilled. It follows from that provision that the cancellation of a
European Union trade mark may be requested even if that mark was
registered for goods or services which are not similar to those for
which the earlier mark was registered.
15 For
an earlier trade mark to be afforded that broader protection under
Article 8(5) of Regulation No 207/2009, a number of
conditions must be satisfied. First, the earlier European Union trade
mark must have been lodged before that for which cancellation is
sought and must be registered. Second, the earlier European Union
trade mark and that for which cancellation is sought must be
identical or similar. Third, the earlier European Union trade mark
must have a reputation in the European Union. Fourth, the use without
due cause of the European Union trade mark for which cancellation is
sought must lead to the risk that unfair advantage might be taken of
the distinctive character or the repute of the earlier European Union
trade mark or that it might be detrimental to the distinctive
character or the repute of that trade mark. As those conditions are
cumulative, failure to satisfy one of them is sufficient to render
Article 8(5) of Regulation No 207/2009 inapplicable (see
judgment of 6 July 2012 in Jackson
International v OHIM — Royal Shakespeare
(ROYAL SHAKESPEARE), T 60/10, not published, paragraph 18
and the case-law cited).
16 In
the present case, the applicant does not contest either that the
McDONALD’S trade mark was lodged before the contested mark, on
1 April 1996, and registered on 16 July 1999 (see
paragraph 6 above), or that the McDONALD’S trade mark enjoys,
in the European Union, a considerable reputation for fast-food
restaurant services, so that compliance with the first and third
conditions of application of Article 8(5) of Regulation
No 207/2009, cited in paragraph 15 above, is not in issue.
17 However,
the applicant disputes certain assessments which led the Board of
Appeal, in the contested decision, to find that there was a certain
degree of similarity between the marks at issue. According to the
applicant, in view of (i) that similarity, (ii) the existence of the
‘Mc’ family of trade marks, (iii) the distinctive character
acquired by the prefix ‘mc’, (iv) the considerable reputation
enjoyed by the McDONALD’S trade mark, which extends to the prefix
‘mc’, used in combination with the name of a menu item or a
foodstuff, and (v) a certain degree of similarity between the goods
and services covered by the marks at issue, because of the close
links between them, such a link could be established, by the relevant
public, between the marks at issue. Consequently, it is highly
probable, it is claimed, that the use without due cause of the
contested trade mark takes unfair advantage of the reputation of the
McDONALD’S trade mark. The subject matter of the proceedings is
therefore limited to the question of whether the Board of Appeal was
entitled to confirm, in the contested decision, the assessments of
the Cancellation Division according to which the second and fourth
conditions for the application of Article 8(5) of Regulation
No 207/2009, referred to in paragraph 15 above, were
satisfied in the present case.
On
whether there is a certain degree of similarity between the marks at
issue
18 The
applicant claims that the Board of Appeal made an error of
assessment, in the contested decision, by concluding that the trade
marks at issue were similar overall, to a certain degree. It argues
that, in accordance with the case-law, the visual similarity must
prevail in the present case, in so far as foodstuffs and beverages
are selected, first and foremost, visually. According to the
applicant, the marks at issue are visually very different and the
Board of Appeal found, wrongly, that the elements ‘mac’ and ‘mc’
were visually similar. It also argues that, phonetically, the marks
at issue are very different. The prefixes ‘mac’ and ‘mc’ are
not, it claims, pronounced in the same way. In English, the use of a
double ‘c’ means that the contested trade mark is pronounced ‘mac
coffi’, while the McDONALD’S trade mark, it is claimed, is
pronounced ‘me don alds’, and that, as is clear from the English
case-law placed on the file of the present proceedings, the accent is
on the second syllable ‘don’, which means that, phonetically, the
element ‘mc’ is a secondary element. Conceptually, the applicant
argues that the McDONALD’S trade mark is understood as a surname,
while the contested trade mark, although it contains the element
‘mac’, which is also a common prefix in surnames of Gaelic origin
(Scottish and Irish), is not broadly speaking understood to be a such
a name, in so far as that element is associated with the term
‘coffee’, which is understood as referring to coffee, namely an
aromatic hot beverage. In that context, the element ‘mac’ in the
contested trade mark is probably understood as referring to an
American slang word used to address a stranger in a friendly manner,
as in the phrase ‘Hey Mac, you want a coffee?’ In the absence of
any similarity between the trade marks at issue, the applicant
considers that the Board of Appeal should have dismissed the
application for a declaration of invalidity and observes that, even
if those trade marks are slightly similar, that does not make it
possible, in the light of EUIPO’s practice, to arrive at a finding
that the relevant public will establish a link between them.
19 EUIPO
and the intervener dispute the applicant’s arguments and contend
that the complaints put forward by it should be rejected, on the
ground that the Board of Appeal did not commit any error of
assessment, in the contested decision, by concluding that there was a
certain degree of overall similarity between the trade marks at
issue.
20 In
that regard, it should be pointed out that the protection provided by
Article 8(5) of Regulation No 207/2009 is not conditional
on there being a degree of similarity between the marks at issue,
such that there exists, on the part of the relevant public, a
likelihood of confusion between them. It is sufficient for the degree
of similarity between those marks to have the effect that the
relevant public establishes a link between them (see, by analogy,
judgments of 16 May 2007 in La Perla v OHIM —
Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T 137/05,
not published, EU:T:2007:142, paragraph 34 and the case-law
cited, and of 16 December 2010 in Rubinstein and
L’Oréal v OHIM — Allergan (BOTOLIST),
not published, T 345/08 and T 357/08, EU:T:2010:529,
paragraph 65 and the case-law cited).
21 The
existence of such a degree of similarity, like the existence of a
degree of similarity within the meaning of Article 8(1)(b) of
Regulation No 207/2009, must be assessed globally, taking into
account all factors relevant to the circumstances of the case.
Accordingly, that global assessment must be based, in so far as the
visual, phonetic and conceptual similarity of the marks at issue are
concerned, on the overall impression given by the marks, account
being taken, inter alia, of their distinctive and dominant elements
(see, by analogy, judgment of 16 May 2007 in NIMEI LA
PERLA MODERN CLASSIC, T 137/05, not published,
EU:T:2007:142, paragraph 35 and the case-law cited).
22 In
the present case, the absence of a likelihood of confusion between
the marks at issue is not contested. The dispute therefore centres on
the issue of whether the assessments of the Board of Appeal, in the
contested decision, make it possible to find that the condition
relating to the existence of a minimal degree of similarity between
the marks at issue, set out in Article 8(5) of Regulation
No 207/2009, was fulfilled.
23 As
regards, first, the visual similarity of the marks at issue, it
should be noted that those marks are word marks.
24 As
the applicant rightly points out, the marks at issue have substantial
visual differences, in so far as, whereas the McDONALD’S mark
consists of nine letters and a typographical sign and the contested
mark consists of nine letters, they only have four letters in common,
namely ‘m’, ‘c’, ‘o’ and ‘a’, three of which do not
occupy the same position in the marks at issue. It is true that both
of those marks start with the letter ‘m’ and their letters ‘c’
and ‘o’ are located respectively in the second and fourth
positions in the McDONALD’S trade mark and in third and fifth
positions in the contested mark. In addition, the letters ‘m’ and
‘c’ are included in the initial part of the marks at issue,
namely the ‘mac’ and ‘mc’ elements. Further, a dissimilarity
between the marks at issue cannot be deduced from the use of lower or
upper case letters, because such a circumstance is immaterial, as the
protection arising from the registration of a word mark relates to
the word indicated in the application for registration and not to the
particular graphic or stylistic aspects that that mark might possibly
assume (see judgment of 29 April 2015, Chair
Entertainment Group v OHIM — Libelle (SHADOW
COMPLEX), T 717/13, not published, EU:T:2015:242,
paragraph 50 and the case-law cited). However, those findings
are not sufficient to conclude that there is a visual similarity,
even to a low degree, of the marks at issue.
25 The
applicant is therefore correct to claim that the finding that the
marks at issue were visually similar, to a low degree, which the
Board of Appeal made in the paragraph 38 of the contested
decision, is erroneous.
26 Next,
with regard to the phonetic similarity of the marks at issue, it is
necessary to confirm the assessment of the Board of Appeal, in
paragraph 39 of the contested decision, that the initial parts
of those marks, namely the elements ‘mac’ and ‘mc’ are both
pronounced ‘mak’ or ‘mac’, the letter ‘a’ being a ‘schwa’
or murmured vowel, pronounced as in English word ‘ago’, at least
by a part of the relevant public. It is true that certain items of
evidence placed on the file in the present proceedings may cast doubt
on the merits of the assessment thus made by the Board of Appeal when
it clearly referred to the English-speaking part of that public. It
follows from the second sentence of paragraph 44 of the judgment
of the High Court of Justice (England & Wales), Chancery Division
(United Kingdom) of 27 November 2001, in the case of Frank
Yu Kwan Yuen v McDonald’s, submitted by the
applicant, that ‘the first syllable of McCHINA ... is pronounced
slightly differently from MAC’. Accordingly, it seems that all or
part of the relevant English-speaking public would pronounce the
initial part of the marks at issue slightly differently. However,
such an error, if it exists, would not affect the legality of the
contested decision, to the extent that, as EUIPO rightly points out,
the part of the public that perceives the prefixes ‘mc’ and ‘mac’
as prefixes of Gaelic surnames pronounces them in the same way. Those
prefixes are traditionally pronounced the same way, namely ‘mac’
(see, to that effect, judgments of 5 July 2012 in Comercial
Losan v OHIM — McDonald’s International
Property (Mc. Baby), T 466/09, not published, EU:T:2012:346,
paragraphs 37 and 41, and of 26 March
2015, Emsibeth v OHIM — Peek &
Cloppenburg (Nael), T 596/13, not published, EU:T:2015:193,
paragraphs 48 and 50).
27 Moreover,
even assuming, as the applicant contends, that all or part of the
relevant public fully pronounce the vowel ‘a’, in the initial
part of the contested mark, while it murmurs that vowel in the
initial part of the McDONALD’S mark, the fact remains that the
pronunciations of the initial parts of the marks at issue are highly
similar. It is true that the final parts of those marks, namely the
elements ‘donald’s’ and ‘coffee’, are phonetically
different, since the mere fact that one letter in them, namely the
letter ‘o’, is pronounced in the same way is, in that regard,
negligible. These differences, however, do not mean that there is not
a certain overall phonetic similarity between those marks, resulting
from their identical or, at the very least, highly similar
pronunciation of their initial part, namely the ‘mac’ and ‘mc’
elements, by the relevant public.
28 The
Board of Appeal was therefore right to find, in paragraph 41 of
the contested decision, that the marks at issue were phonetically
similar, to a certain degree.
29 As
regards the conceptual similarity of the marks at issue, it should be
recalled that, according to case-law, marks are fairly similar when
they evoke the same idea (see, to that effect, judgments of 16 May
2007 in Merant v OHIM — Focus Magazin
verlag (FOCUS), T 491/04, not published, EU:T:2007:141,
paragraph 57, and of 11 December 2008 in Tomorrow
Focus vOHIM — Information Builders (Tomorrow
Focus), T 90/06, not published, EU:T:2008:567,
paragraph 35).
30 In
the present case, first of all, it should be noted, as the Board of
Appeal did in paragraphs 42 and 66 of the contested decision,
that the elements ‘mc’ and ‘mac’ in the marks at issue are
associated, by the relevant public, with the same idea, namely the
prefix of a Gaelic surname, which the English-speaking part of the
relevant public even identifies as meaning ‘son of’, and which
carries no particular meaning for the rest of the relevant public
(see, to that effect, judgment of 5 July 2012 in Mc.
Baby, T 466/09, not published, EU:T:2012:346, paragraph 41,
and of 26 March 2015 in Nael, T 596/13, not
published, EU:T:2015:193, paragraph 41). As EUIPO correctly
observes, it is common knowledge, for the part of the relevant public
that knows the prefixes of Gaelic surnames, that they are written
interchangeably as ‘mc’ or ‘mac’. Furthermore, the Board of
Appeal was right to find, at least for the English-speaking part of
the relevant public, that the final part of the contested mark,
namely the element ‘coffee’, was understood as making reference
to an aromatic drink, traditionally served hot, blended from the
beans of the coffee plant. The part of the relevant public that knows
the prefixes of Gaelic surnames and that understands the meaning of
the English word ‘coffee’ is able to identify, in the contested
mark, the association of those two elements, and particularly since,
as EUIPO rightly points out, such an association of the prefix ‘mac’
or ‘mc’ with a word used in everyday language is not unusual
(judgment of 5 July 2012, Mc. Baby, T 466/09,
not published, EU:T:2012:346). The association, in the contested
mark, of a word referring to a Gaelic surname and of another word
referring to the name of a drink is more probably understood by the
relevant public as a reference to a beverage produced by a person of
Scottish or Irish origin than, as the applicant submits, as referring
to a familiar expression in which the word ‘mac’ is used as a
friendly address to a stranger.
31 It
follows from the above that the marks at issue have a certain
conceptual similarity, in so far as they are both perceived, at least
by a part of the relevant public, as referring to a surname of Gaelic
origin. Consequently, the Board of Appeal was right to find, in
paragraph 42 of the contested decision, that the marks at issue
were conceptually similar, to a certain degree.
32 As
regards, finally, the overall similarity existing between the marks
at issue, which is sufficient for the relevant public to establish a
link between them, even if it does not confuse them, it should be
recalled that it must be determined taking into account the visual,
phonetic and conceptual similarity of those marks and, if
appropriate, the assessment of the relative importance that should be
attached to those different elements, taking account of the category
of goods or services in question and the circumstances in which they
are marketed (see, to that effect and by analogy, concerning the
assessment of the existence of a likelihood of confusion, judgment of
22 June 1999 in Lloyd Schuhfabrik Meyer, C 342/97,
EU:C:1999:323, paragraph 27).
33 In
the present case, the marks at issue differ visually, but have a
certain degree of phonetic and conceptual similarity, which stems
from their respective initial part, namely the ‘mac’ and ‘mc’
elements. Those phonetic and conceptual similarities between the
marks cannot be totally disregarded on the ground, alleged by the
applicant, that the method of marketing the goods covered by the
trade mark concerned is based on a selection that is primarily
visual. It is true that it follows from the case-law that, where the
goods covered by a mark are everyday consumer goods, usually sold in
self-service stores, the relevant public, when purchasing, usually
perceives the mark concerned visually, so that the visual aspect is
more important in the overall assessment of the similarity between
that mark and another mark, with which it is in conflict (see, to
that effect and by analogy, concerning the assessment of the
existence of a likelihood of confusion, judgments of 23 May
2007, Henkel v OHIM — SERCA (COR),
T 342/05, not published, EU:T:2007:152, paragraph 53 and
the case-law cited, and of 13 December 2007 in Cabrera
Sánchez v OHIM — Industrias Cárnicas Valle
(el charcutero artesano), T 242/06, not published,
EU:T:2007:391, paragraph 80 and the case-law cited). However,
even if, in such a case, the phonetic similarity is of less
importance (judgment of 13 December 2007, el charcutero
artesano, T 242/06, not published, EU:T:2007:391,
paragraph 81), in so far as the mark will usually not be
pronounced by the consumer of the goods concerned, it does not
thereby become negligible and indeed remains as important as ever,
since it is not excluded that, in some cases, an oral communication
concerning the goods and the mark concerned may have occurred prior
to purchase (see, to that effect, judgments of 23 May 2007
in COR, T 342/05, not published, EU:T:2007:152,
paragraph 53, and of 23 September 2011 in NEC
Display Solutions Europe v OHIM — C More
Entertainment (see more), T 501/08, not published,
EU:T:2011:527, paragraph 53) or that those goods have been
advertised orally, on radio or by other consumers (judgment of
23 September 2011,see more, T 501/08, not published,
EU:T:2011:527, paragraph 53). Similarly, while, in such a case,
the importance of the conceptual similarity is reduced by the fact
that, in self-service stores, consumers lose little time between
successive purchases and often do not read all the information on the
various products, letting themselves be guided more by the overall
visual impression produced by the labels or packaging (judgment of
2 December 2008 in Ebro Puleva v OHIM —
Berenguel (BRILLO’S), T 275/07, not published,
EU:T:2008:545, paragraph 24), it does not necessarily become
insignificant, in particular where the marks at issue are word marks.
34 Taking
phonetic and conceptual aspects into account, it can be concluded
that, even if the marks at issue differ visually and also have
conceptual and phonetic differences, because of their different final
part, they nonetheless have a certain degree of overall similarity,
due to the conceptual and phonetic similarity of their respective
initial part, namely the elements ‘mc’ and ‘mac’.
35 Consequently,
even if the Board of Appeal erred in deciding that the marks at issue
had a low degree of visual similarity (see paragraph 25 above),
it was right to find, in paragraph 48 of the contested decision,
that the marks at issue were similar overall, to a certain degree.
Accordingly, the error identified in the context of the assessment of
the similarity between the marks at issue must not lead to the
annulment of the contested decision.
36 It
must therefore be held that the assessments of the Board of Appeal,
in the contested decision, that the second condition for application
of Article 8(5) of Regulation No 207/2009, referred to in
paragraph 15 above, was satisfied in the present case are well
founded and, therefore, all of the complaints regarding those
assessments must be rejected.
On
whether the relevant public will establish a link between the marks
at issue
37 In
the first place, it should be pointed out that the types of damage
referred to in Article 8(5) of Regulation No 207/2009,
where they occur, are the consequence of a connection that the
relevant public makes between the marks at issue, that is to say, a
link that it establishes between those marks, even though it does not
confuse them (see, to that effect, judgment of 6 July 2012
in ROYAL SHAKESPEARE, T 60/10, not published,
EU:T:2012:348, paragraph 19 and the case-law cited). The
establishment of such a link must be assessed globally, taking into
account all factors relevant to the circumstances of the case (see
judgment of 6 July 2012 in ROYAL SHAKESPEARE,
T 60/10, not published, EU:T:2012:348, paragraph 20 and the
case-law cited). 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 and the existence of a
likelihood of confusion (see judgment of 6 July 2012, ROYAL
SHAKESPEARE, T 60/10, not published, EU:T:2012:348,
paragraph 21 and the case-law cited).
38 In
the present case, the applicant contests, in particular, the findings
of the Board of Appeal, in the contested decision, according to
which, first, the existence of the family of marks ‘Mc’ is a
relevant factor in assessing whether the relevant public establish a
link between the marks at issue and, secondly, there is a certain
degree of similarity between the services and goods in question, due
to the close links existing between them.
On
whether the existence of the family of trade marks ‘Mc’ is a
relevant factor when assessing if the relevant public establish a
link between the marks at issue
39 The
applicant claims that the Board of Appeal made an error of
assessment, in the contested decision, in concluding that, as a
result of the element ‘mac’ in the contested mark, the relevant
public could associate that trade mark with the ‘Mc’ family of
trade marks, from the McDONALD’S trade mark. It considers, in that
regard, that the case-law concerning the family of marks must be
strictly interpreted, as it derogates from the general principle that
any trade mark must be assessed globally. According to the applicant,
the documents placed by the intervener on the case-file relating to
the proceedings before EUIPO, namely menus from the intervener’s
fast-food restaurants, an independent survey carried out in 1991 and
in 1992 and the decisions of courts of the Member States, were
insufficient to conclude that the prefix ‘mc’ was associated, on
the part of the relevant public, with foodstuffs and beverages.
Except for a document referring to the McDONALD’s trade mark, those
documents all dated from 2010 and, therefore, after 13 October
2008, the date on which the application for registration of the
contested trade mark was filed. Furthermore, it is claimed, the part
of the independent survey carried out in 1991 reveals only that the
persons surveyed would associate the prefix ‘mc’ with the
McDONALD’S trade mark, while the part of that survey carried out in
1992, the results of which could have been distorted by a biased
drafting of the question posed, only makes it possible to conclude
that most of the persons surveyed knew that the prefix ‘mc’,
combined with other words, was used in relation to fast-food or
self-service restaurant services. According to the applicant, the
Board of Appeal was not justified in suggesting that the conclusions
of the independent survey continued to be relevant more than 16 years
later, and that they were even more relevant. Lastly, the decisions
of courts of the Member States examined by the Board of Appeal are
not, it is claimed, convincing, since they are not binding on EUIPO
and relate to specific situations. The applicant states that it is
clear, by implication, from the case-law and from Part C, Section 2,
Chapter 7, paragraph 2, p. 4 of the directives concerning
proceedings before EUIPO (‘the EUIPO directives’) that the
concept of a family of trade marks is not applicable in the present
case, in so far as the element ‘mac’ in the contested trade mark
is not identical to the element ‘mc’, common to the ‘Mc’
family of trade marks. The element ‘coffee’ in the contested
trade mark and which refers to the name of a beverage, differentiates
that trade mark from the intervener’s earlier trade marks combining
the prefix ‘mc’ with the name of a menu item or a foodstuff,
written principally in lower-case letters. The applicant relies on
the fact that, within the European Union, the intervener does not
sell beverages under a trade mark including the prefix ‘mc’.
According to the applicant, the differences which exist between the
contested trade mark and the intervener’s earlier trade marks are
sufficiently significant to be perceived by the relevant public.
40 In
the alternative, the applicant claims that the McDONALD’S trade
mark does not have the same structure as the intervener’s other
earlier trade marks, combining the prefix ‘mc’ with the name of a
menu item or a foodstuff, such that it does not belong to the ‘Mc’
family of trade marks. Use of the element ‘mc’ and, a
fortiori, of the element ‘mac’ is not, it is claimed, open to
criticism as it is a common prefix in Gaelic surnames and is used in
numerous ways, without raising any objections.
41 EUIPO
and the intervener contest the applicant’s arguments and submit
that the Board of Appeal rightly found, in the contested decision,
that the existence of the ‘Mc’ family of trade marks was a factor
to be taken into account when assessing whether the relevant public
established a link between the trade marks at issue.
42 As
has been observed in paragraph 37 above, the establishment, on
the part of the public concerned, of a link between the trade marks
at issue, must be assessed globally, taking into account all factors
relevant to the circumstances of the case (see judgment of 6 July
2012 in ROYAL SHAKESPEARE, T 60/10, not published,
EU:T:2012:348, paragraph 20 and the case-law cited). One of the
relevant factors in that regard is the existence of a family of
earlier marks (see, to that effect, judgment of 26 September
2012 in IG Communications v OHIM —
Citigroup and Citibank (CITIGATE), T 301/09, not published,
EU:T:2012:473, paragraph 106). Where an application for a
declaration of invalidity of a mark 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 in respect of which a declaration of invalidity is sought,
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, to that effect and by analogy, judgment of
13 September 2007 in Il Ponte Finanziaria v OHIM,
C 234/06 P, EU:C:2007:514, paragraphs 62 and 63).
43 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 (judgment of 23 February 2006
in Il Ponte Finanziaria v OHIM —
Marine Enterprise Projects (BAINBRIDGE), T 194/03,
EU:T:2006:65, paragraph 123). The proprietor of the earlier
marks did not provide evidence that those marks are perceived by the
relevant public as constituting a family (judgment of 25 November
2014 in UniCredit v OHIM, T 303/06 RENV
and T 337/06 RENV, EU:T:2014:988, paragraphs 65 to 67).
44 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, to that effect and by analogy,
judgments of 13 September 2007 in Il Ponte
Finanziaria v OHIM, C 234/06 P,
EU:C:2007:514, paragraph 64, and of 23 February 2006
inBAINBRIDGE, T 194/03, EU:T:2006:65, paragraph 126).
45 It
is therefore for the proprietor of the earlier marks, which is
applying to have the later European Union trade mark declared
invalid, to provide evidence of the effective use of a sufficient
number of those marks as to be capable of constituting a ‘family’
of marks and, therefore, of demonstrating that such a family exists
for the purposes of assessing whether the relevant public establishes
a link between the mark in respect of which a declaration of
invalidity is sought and the earlier marks which make up that
‘family’ (see, to that effect and by analogy, judgments of
13 September 2007 in Il Ponte Finanziaria v OHIM,
C 234/06 P, EU:C:2007:514, paragraphs 65 and 66, and
of 23 February 2006 in BAINBRIDGE, T 194/03, EU:T:2006:65,
paragraph 126) or even simply between the mark in respect of
which a declaration of invalidity is sought and the earlier mark
originating from that ‘family’.
46 In
view of the case-law cited in paragraphs 42 to 45 above, it must
be determined, first, whether the intervener has provided evidence of
the actual use of a sufficient number of its earlier marks to
constitute, having regard to their common characteristics, a ‘family’
of marks and, secondly, whether the contested mark contains elements
that connect with characteristics common to that ‘family’.
– The
actual use of a sufficient number of earlier marks to constitute a
‘family’ of marks
47 In
paragraphs 57 and 86 of the contested decision, the Board of
Appeal endorsed the findings of the Cancellation Division according
to which the evidence provided by the intervener was sufficient to
prove genuine use of the McDONALD’S mark for fast-food restaurant
services. In that regard, it referred in particular to the evidence
produced by the intervener that the mark occupied the sixth position
in the world in the global analysis of trade marks carried out by a
consultancy firm, and that the services sold under that mark
generated an income of about EUR 32 billion, which was further
supported by declarations, to which were appended product labels,
menu displays and promotional material.
48 Furthermore,
in paragraphs 58 to 60 of the contested decision, the Board of
Appeal stated that the evidence provided by the intervener was
sufficient for a finding of actual use on the market of marks
combining the prefix ‘mc’ with another word, such as the marks
McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS,
McCHICKEN, EGG McMUFFIN and McFEAST, for fast-food restaurant
services and products in the menu of fast-food establishments, in a
part of the territory of the European Union. In that regard, it
referred in particular to the independent survey conducted in 1991
and 1992 and to the decisions of the national courts produced by the
intervener.
49 In
the present case, the applicant merely claims that the evidence
produced by the intervener does not demonstrate that the actual use
of the prefix ‘mc’, combined with another word, was sufficient,
in the territory of the European Union, in the relevant periods, for
that prefix to be associated, by the relevant public, to foodstuffs
and beverages. Thus, the applicant does not dispute the actual use of
the earlier marks, but the fact that that use was sufficient for the
prefix ‘mc’, combined with another word, to acquire its own
distinctive character for foodstuffs and beverages.
50 At
the outset, it should be noted that, in paragraph 59 of the
contested decision, the Board of Appeal merely found that the actual
use of the prefix ‘mc’, combined with another word, had been, at
least in part of the territory of the European Union, sufficient, in
the relevant periods, for this prefix to be associated by the
relevant public, to fast-food restaurant services and the goods on
the menu of fast-food establishments.
51 In
the present case, it is therefore necessary to determine whether the
intervener provided the evidence of actual use of the trade marks
referred to in paragraphs 47 and 48 above, such as to have
conferred on the prefix ‘mc’, combined with another word, its own
distinctive character in relation to fast-food restaurant services
and the products on the menu of fast-food establishments, at least in
part of the territory of the European Union.
52 In
that regard, it should be noted that, to assess whether a trade mark
has been put to actual use in a specific case, an overall assessment
of the evidence produced must be carried out, taking account of all
the relevant factors in the case. In such an assessment, regard must
be had to all the facts and circumstances relevant to establishing
whether the commercial exploitation of the mark is real, particularly
whether such use is viewed as warranted in the economic sector
concerned to maintain or create a share in the market for the goods
or services protected by the mark, the nature of those goods or
services, the characteristics of the market and the scale and
frequency of use of the mark (see, by analogy, judgment of
29 February 2012 in Certmedica International and Lehning
entreprise v OHIM — Lehning entreprise and
Certmedica International (L112), T 77/10 and T 78/10,
not published, EU:T:2012:95, paragraph 40 and the case-law
cited).
53 Actual
use of a trade mark cannot be proved by means of probabilities or
suppositions, but must be demonstrated by solid and objective
evidence (see, by analogy, judgment of 23 September 2009
in Cohausz v OHIM — Izquierdo Faces
(acopat), T 409/07, not published, EU:T:2009:354,
paragraph 36 and the case-law cited).
54 However,
it follows from Rule 22(4) of Commission Regulation (EC) No 2868/95
of 13 December 1995 implementing Regulation No 40/94 (OJ
1995 L 303, p. 1), which applies mutatis
mutandis in invalidity proceedings pursuant to Rule 40(6) of
that regulation, that the evidence of use is, in principle, confined
to the submission of supporting documents and items such as packages,
labels, price lists, catalogues, invoices, photographs, newspaper
advertisements, and statements in writing sworn or affirmed, as
referred to in Article 78(1)(f) of Regulation No 207/2009.
55 Furthermore,
it follows from Article 57(2) of Regulation No 207/2009,
read in conjunction with Article 42(2) of that regulation, that
the periods to be taken into account to establish genuine use of the
McDONALD’S trade mark and, a fortiori, actual use of
the other earlier marks, deriving from that mark and that may
constitute, according to the intervener, a ‘family’ of trade
marks are, on the one hand, the period from 12 January 2004 to
11 January 2009 and, on the other, the period from 13 August
2005 to 12 August 2010 (‘the relevant periods’). Admittedly,
taking into consideration circumstances that are subsequent to, or
even prior to, the periods thus defined by the applicable legislation
is possible, but is necessarily subject to the presentation of
documents showing use of the trade marks concerned during those
periods (see, by analogy, the judgment of 27 September 2012
in El Corte Inglés v OHIM — Pucci
International (PUCCI), T 39/10, not published,
EU:T:2012:502, paragraph 26). The Board of Appeal was therefore
right, in paragraph 86 of the contested decision, to endorse the
findings set out in paragraph 24 of the decision of the
Cancellation Division, which define the relevant periods in the
manner referred to above.
56 The
evidence of use produced in the present case by the intervener is
listed in paragraphs 29 and 30 of the decision of the
Cancellation Division.
57 As
the Board of Appeal was right to state in paragraphs 57 and 86
of the contested decision, the evidence produced relating to the
relevant periods prove to the requisite legal standard, at least in
part of the territory of the European Union, the genuine use of the
McDONALD’S trade mark for fast-food restaurant services. Indeed,
that evidence shows that, during the relevant periods, the McDONALD’S
trade mark has remained one of the 10 most important marks worldwide
and that it has been used intensively, over a substantial part of the
territory of the European Union, to designate fast-food services and
products on the menu of fast-food establishments.
58 Furthermore,
as the Board of Appeal correctly found in paragraph 58 of the
contested decision and as is apparent, moreover, from the evidence
produced by the intervener, the intervener had already obtained
registration or registered, during the relevant periods, many marks
combining the prefix ‘mc’ with another word, such as the trade
marks McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS,
McCHICKEN, EGG McMUFFIN and McFEAST, for fast-food services and goods
on the menu of fast-food establishments. Furthermore, it used the
marks McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG
McMUFFIN in Germany and the marks McFLURRY, CHICKEN McNUGGETS,
McCHICKEN and EGG McMUFFIN in the United Kingdom, to designate goods
on the menu of fast-food establishments and on advertising material.
Even if, as the applicant noted, the intervener did not provide
information on the turnover achieved for each of the goods in
question, it placed on the case-file relating to the proceedings
before EUIPO documents which establish that, in 2004 and 2009, during
the relevant periods, it had, respectively, 1 262 and 1 361
establishments in Germany and 1 250 and 1 193
establishments in the United Kingdom. Furthermore, it is apparent
from the 2009 annual report drawn up by the intervener for Germany,
produced during the proceedings before EUIPO and included in the file
of the present proceedings, that the intervener’s German
establishments achieved a significant turnover in 2008 and 2009.
Assessed globally, in accordance with the solution adopted in the
judgment of 17 February 2011 in J & F
Participações v OHIM — Plusfood Wrexham
(Friboi) (T 324/09, not published, EU:T:2011:47,
paragraphs 27 and 31), that evidence makes it possible to find,
in the present case, actual use by the intervener of the marks
McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG
McMUFFIN in Germany and in the United Kingdom, namely in a
substantial part of the territory of the European Union, during the
relevant periods.
59 Moreover,
as correctly observed by the Board of Appeal in paragraph 59 of
the contested decision, the courts in Germany, Spain, Sweden and the
United Kingdom found, during the relevant periods, that the prefix
‘mc’, combined with another word, had acquired its own
distinctive character for fast-food services and goods on the menu of
fast-food establishments. While EUIPO is not bound by decisions made
by the authorities in the Member States and while, in so far as the
application of EU trademark law is independent of any national
system, the legality of EUIPO decisions cannot be called into
question solely on the basis of assessments contained in earlier
national decisions, those decisions may nevertheless be taken into
consideration by EUIPO, as indicia, in the context of its assessment
of the facts of the case (see, to that effect, judgments of 21 April
2004 in Concept v OHIM (ECA), T 127/02,
EU:T:2004:110, paragraphs 70 and 71; of 9 July 2008
in Reber v OHIM — Chocoladefabriken
Lindt & Sprüngli (Mozart), T 304/06, EU:T:2008:268,
paragraph 45; and of 25 October 2012 in riha v OHIM —
Lidl Stiftung (VITAL&FIT), T 552/10, not published,
EU:T:2012:576, paragraph 66). Thus, contrary to what the
applicant claims, the Board of Appeal could, for purposes of its own
assessment of the facts of the case, take into account in the
contested decision, as indicia, the findings made by the national
courts during the relevant periods, from which it was clear that, in
the territory covered by their competence, the use of the prefix
‘mc’, combined with another word, was such that it enabled it to
acquire its own distinctive character for fast-food restaurant
services and the goods on the menu of fast-food establishments.
60 As
the Board of Appeal rightly pointed out in paragraph 59 of the
contested decision, the findings thus made by the national courts
were, furthermore, supported by the independent survey carried out in
1991 and 1992, from which it is apparent that, in the mind of the
relevant public, the prefix ‘mc’ was largely associated with the
sign McDONALD’S and that that prefix, combined with another word,
was widely associated with fast-food establishments belonging to the
same group. According to the case-law cited in paragraph 55
above, those elements, prior to the relevant periods, could be used
by the Board of Appeal. As regards the questions raised in the
independent survey, it should be noted, contrary to what the
applicant claims, that their formulation made it possible to verify,
objectively, to what extent, in the mind of the relevant public,
namely the German consumer of fast-food services, the prefix ‘mc’
was associated, on the one hand, with the sign McDONALD’S and, on
the other, with fast-food restaurant services belonging to the same
group. As regards the specific time frame of those results, it must
be held that they do not make it possible to make links between the
use of the McDONALD’S trade mark and the earlier marks McMUFFIN,
McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG McMUFFIN, the
actual use of which was found in paragraph 58 above. Those marks
were, moreover, all registered after the period covered by the
independent survey. However, those results support the fact that, at
the time when those marks were used, the prefix ‘mc’, combined
with another word, had already acquired its own distinctive character
in relation to fast-food restaurant services. As EUIPO rightly
observed, there is no reason to conclude, in the circumstances of
this case, that the findings made in the context of the independent
survey had been subsequently invalidated, since, as the Board of
Appeal noted in paragraph 86 of the contested decision, the
evidence produced by the intervener demonstrates that, during the
relevant periods, the intervener continued to register trade marks
combining the prefix ‘mc’ with another word and that the
McDONALD’S trade mark has remained one of the most important trade
marks in the world. That proves that the intervener continued to
invest to preserve the reputation of that mark for fast-food
restaurant services.
61 The
evidence produced by the intervener therefore demonstrates that the
use by the latter of the marks McDONALD’S, McMUFFIN, McRIB,
McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG McMUFFIN was
sufficient to ensure that, in the relevant periods, the prefix ‘mc’,
combined with the name of a menu item or foodstuff, retains its own
distinctive character that it had previously acquired in relation to
fast-food restaurant services and goods on the menu of fast-food
establishments, at least in part of the territory of the European
Union.
62 Consequently,
the Board of Appeal was right to find, in paragraph 60 of the
contested decision, that the intervener had provided sufficient
indications that the earlier marks, referred to in paragraph 58
above, had actually been used during the relevant periods.
63 In
addition, the Board of Appeal was right to find, in essence, in
paragraphs 67 to 69, 73 and 74 of the contested decision, that
the evidence produced by the intervener demonstrated to the requisite
legal standard that, during the relevant periods, the prefix ‘mc’
combined with the name of a menu item or foodstuff, had acquired its
own distinctive character in relation to fast-food restaurant
services and goods on the menu of fast-food establishments, at least
in part of the territory of the European Union, so that, according to
the case-law cited in paragraph 43 above, that prefix was
capable of characterising the existence of a family of marks.
64 Finally,
it should be noted that the marks McMUFFIN, McRIB, McFLURRY, CHICKEN
McNUGGETS, McCHICKEN and EGG McMUFFIN, derived from the McDONALD’S
trade mark, fulfil all the conditions to form a ‘family’ of trade
marks, within the meaning of the case-law cited in paragraph 43
above, in so far as they are sufficient in number and reproduce in
full the same distinctive element, namely the element ‘mc’, with
the addition of a word element that differentiates them from each
other and that they are characterised by the repetition of the same
prefix, ‘mc’, taken from the McDONALD’S trade mark. The fact
that, in the latter mark, the second element refers to a surname
whereas, in the marks constituting the family, it refers to the name
of goods on the menu of fast-food establishments is irrelevant,
contrary to what the applicant claims. As the Board of Appeal
correctly observed in paragraph 81 of the contested decision,
the McDONALD’S trade mark, with a reputation for fast-food
restaurant services, is the original trade mark of the family, to
which all the derived marks are connected by a common feature, namely
the prefix ‘mc’, and from which they are all separated by the
same type of final element, which refers to one of the foodstuffs on
the menu of the intervener’s fast-food restaurants, as is pointed
out in paragraph 61 of the contested decision.
65 The
Board of Appeal was also right to find, therefore, in paragraphs 58
and 60 of the contested decision, that the earlier marks formed a
‘family of marks’ and had been used ‘as a “family of marks”’.
– The
presence, in the contested mark, of elements capable of associating
it with the ‘Mc’ family of trade marks
66 In
paragraphs 63 and 64 of the contested decision, the Board of
Appeal held that the contested mark had characteristics capable of
associating it with the ‘Mc’ family of marks, in so far as (i)
that mark began with the prefix ‘mac’, which would probably be
perceived as being almost identical to the prefix common to the ‘Mc’
family of marks, (ii) the structure of the mark at issue was very
similar to that which was common to the ‘Mc’ family of marks and
(iii) the prefixes ‘mc’ and ‘mac’ occupied, in the contested
mark and in the ‘Mc’ family of marks, the same position and had
the same semantic content.
67 In
that regard, it must be held that the Board of Appeal was right to
find, in the circumstances of the present case, that the contested
mark had characteristics capable of associating it with the ‘Mc’
family of marks, for the reasons stated in paragraphs 30 and 64
above.
68 The
arguments put forward by the applicant to contest the existence of
characteristics capable of associating the contested mark with ‘Mc’
family of marks are not convincing.
69 As
regards the argument that the initial element of the contested mark,
namely the element ‘mac’ is simply similar to the prefix common
to the ‘Mc’ family of marks, namely the prefix ‘mc’, whereas
Part C, ‘Opposition’, Section 2, Chapter 7, paragraph 2,
p. 4 of the EUIPO directives provides that the element common to
the contested mark and to the family of marks must be ‘identical or
very similar’, it suffices to note that, at least for the part of
the relevant public that knows the prefixes of Gaelic surnames, the
initial element of that mark, namely the element ‘mac’, is
perceived as identical or equivalent to the initial element common to
the ‘Mc’ family of marks, namely the element ‘mc’.
70 As
regards, moreover, the arguments based on the visual comparison of
the marks at issue, those are irrelevant in so far as it is the
conceptual identity and, to a lesser extent, the phonetic identity of
the initial elements of the contested mark and the ‘Mc’ family of
marks, as well as the identical structure of the former and latter,
which make it possible to associate the contested mark with that
family of marks (see paragraph 69 above). In any event, the fact
that, in their actual use, the contested mark and the earlier marks
of that family of marks can be distinguished by the use of upper or
lower case characters is irrelevant, according to the case-law
already cited in paragraph 24 above.
71 Furthermore,
the argument concerning the different structure of the contested mark
and of the earlier marks of the ‘Mc’ family of marks, while
relevant, cannot call into question the merits of the assessment of
the Board of Appeal. The Board of Appeal was right to find, in
paragraph 92 of the contested decision, that the goods for which
the disputed mark was registered, and which covered both foodstuffs
(including ice cream, muffins, filled sandwiches and toasted
sandwiches) and beverages, were closely linked to services for which
the McDONALD’S trade mark had a reputation, namely fast-food
restaurant services, in the context of which foodstuffs and drinks
were supplied to customers (see paragraph 76 et seq. below).
Furthermore, in so far as the applicant states that it uses the
contested mark only to market beverages, it should be noted that,
according to the case-law, it is not the goods for which the mark at
issue is actually used in the market that must be taken into account,
but those goods for which the mark was registered (see, to that
effect, judgment of 13 April 2005 in Gillette v OHIM —
Wilkinson Sword (RIGHT GUARD XTREME sport), T 286/03, not
published, EU:T:2005:126, paragraph 33).
72 Finally,
as regards the argument that the contested mark does not reproduce
the same structure as that of the McDONALD’S trade mark, this is
irrelevant. What matters is that the contested mark reproduces the
common characteristics that connect the earlier marks of the ‘Mc’
family of marks and which differentiate them from the McDONALD’S
trade mark, which is the original mark of that family of marks.
73 Ultimately,
it should be noted that the Board of Appeal was justified, having
regard to the case-law cited in paragraph 42 above, to consider,
in paragraphs 99 and 100 of the contested decision, that the
existence of the ‘Mc’ family of marks was, in the present case, a
factor to be taken into account in assessing the establishment, on
the part of the relevant public, of a link between the marks at
issue.
On
whether there is a certain degree of similarity between the goods and
services at issue
74 The
applicant submits that the Board of Appeal made an error of
assessment, in the contested decision, in finding that there is a
certain degree of similarity between the services and the goods at
issue, by reason of the close links existing between them. According
to the applicant, the services and goods at issue are, for the
McDONALD’S trade mark, fast-food restaurant services, in respect of
which that trade mark has a reputation, and, for the contested trade
mark, the goods for which the latter was registered, namely certain
foodstuffs and certain beverages and, in particular, coffee,
artificial coffee, instant coffee, instant coffee mix, coffee beans,
coffee in ground form in class 30 (‘basic coffee goods’) which
are sold under the trade mark concerned. The applicant claims that it
is clear from EUIPO’s decision-making practice that restaurant
services, on the one hand, and foodstuffs and beverages, on the other
hand, are not similar. The fact that consumers of the services and
goods at issue are, it is claimed, the same is irrelevant for
assessing whether there is a similarity between those services and
those goods, since the general public within the European Union
purchases all types of services and goods, which could be very
similar or very different. Basic coffee goods, it is claimed, are not
at all similar to fast-food restaurant services, as they are sold in
supermarkets and grocery stores and not in fast-food restaurant
establishments and, if they were, consumers would not believe that
those establishments were responsible for their manufacture. The fact
that the restaurant establishments use raw foodstuffs and serve
foodstuffs does not mean that the restaurant services are similar to
food foodstuffs, as is apparent both from the case-law and from Part
C.2, Chapter 2.B, Section 5.3.3, of the EUIPO directives, as in force
at the material time. According to the applicant, the case-law cited
by EUIPO is irrelevant because it relates to prepared foods. The
applicant considers that the documents placed by the intervener on
the case-file relating to the proceedings before EUIPO did not enable
the Board of Appeal to claim, in paragraph 101 of the contested
decision, that foodstuffs, such as ketchup, were sold under the
McDONALD’S trade mark in German and Italian supermarkets
75 EUIPO
and the intervener dispute the applicant’s arguments and submit
that the Board of Appeal did not make an error of assessment, in the
contested decision, in finding that there is a certain degree of
similarity between the services and the goods at issue.
76 At
the outset, it should be recalled that Article 8(5) of
Regulation No 207/2009 must be interpreted as meaning that it
may be relied on in support of an application for a declaration of
invalidity, whether the goods and services covered by the earlier
European Union mark and the goods and services for which a European
Union trade mark has been registered are identical or similar, or are
neither identical nor similar (see, to that effect, judgment of
22 March 2007 in Sigla v OHIM —
Elleni Holding (VIPS), T 215/03, EU:T:2007:93,
paragraph 33).
77 According
to case-law, the degree of closeness or dissimilarity of the goods or
services concerned is only, in that context, a relevant factor when
assessing the establishment, on the part of the public concerned, of
a link between the trade marks at issue (see judgment of 6 July
2012 in ROYAL SHAKESPEARE, T 60/10, not published,
EU:T:2012:348, paragraph 21 and the case-law cited).
78 In
assessing the similarity of the goods and services concerned, all the
factors relating to those goods and services should be taken into
account, including, inter alia, their nature, their intended purpose
and their method of use and whether they are in competition with each
other or are complementary (judgment of 29 September 1998
in Canon, C 39/97, EU:C:1998:442, paragraph 23).
79 As
was observed in paragraph 71 above, the goods and services to be
compared in the present case are, first, the services for which the
McDONALD’S trade mark has a reputation, namely fast-food restaurant
services, in the context of which foodstuffs and drinks were supplied
to customers and, secondly, the goods for which the contested mark is
registered, which covers certain foodstuffs and beverages. For the
reasons set out in paragraph 71 above, the applicant cannot
validly claim that that comparison should focus, with regard to the
contested mark, on drinks, in so far as, in practice, it uses that
mark primarily to market drinks.
80 Admittedly,
it is indisputable that foodstuffs and drinks, on the one hand, and
restaurant services, on the other, do not have the same nature, the
same intended purpose or the same method of use (see, to that effect,
judgment of 12 December 2014 in Comptoir
d’Épicure v OHIM — A-Rosa Akademie (da
rosa), T 405/13, not published, EU:T:2014:1072,
paragraph 96). However, it follows from the case-law that
foodstuffs, broadly speaking, including beverages, on the one hand,
and restaurant services, on the other, have, despite their
differences, a certain degree of similarity, since (i) the foodstuffs
concerned are used and offered in the context of restaurant services,
so that there is complementarity between those goods and services,
(ii) the restaurant services can be offered in the same places as
those in which the foodstuffs concerned are sold and (iii) the
foodstuffs concerned may originate from the same undertakings or from
economically-linked undertakings which market packaged goods, or from
restaurants which sell ready-made food to take away (see, to that
effect, judgments of 12 December 2014 in da rosa,
T 405/13, not published, EU:T:2014:1072, paragraphs 97 and
98 and the case-law cited, and of 4 June 2015 in Yoo
Holdings v OHIM — Eckes-Granini Group (YOO),
T 562/14, not published, EU:T:2015:363, paragraphs 25 to
28).
81 The
fact that the EUIPO directives cited by the applicant do not reflect
exactly, in that regard, the case-law cited in paragraph 80
above is irrelevant, since those directives are not binding legal
acts for the purpose of interpreting provisions of EU law (judgment
of 19 December 2012 in Leno Merken, C 149/11,
EU:C:2012:816, paragraph 48).
82 In
the present case, first of all, it should be noted that the
foodstuffs, in the broad sense, covered by the contested mark may be
used and offered in the context of the fast-food restaurant services
provided by the intervener. Certain foodstuffs covered by the
contested mark, such as ice cream, muffins, filled sandwiches and
toasted sandwiches, are not, moreover, simple ingredients serving as
the basis for dishes served in fast-food restaurants, but correspond
to the goods offered, as such, on the menu of those establishments.
Thus, as the Board of Appeal correctly observed in paragraph 95
of the contested decision, the foodstuffs and restaurant services in
question are intended for the same consumers. There is, therefore,
complementarity between those goods and services.
83 Secondly,
as regards foodstuffs covered by the contested mark and corresponding
to goods used or offered, as such, on the menu of fast-food
establishments, it should be noted that those goods can be consumed
on the spot, in the establishments themselves where the intervener’s
fast-food restaurant services are offered.
84 Finally,
as the intervener has stated, fast-food restaurant services, such as
those which it provides, are also provided on a take-away basis. In
such a case, the consumer tends to establish a link between the mark
affixed to the packaging of the take-away goods and the commercial
origin of those goods.
85 In
the light of the observations set out in paragraphs 82 to 84
above, it should be noted that the assessments of the Board of Appeal
in paragraphs 92, 95, 96 and 101 of the contested decision,
according to which there is a certain degree of similarity between
the services and goods in question, because of the close links
between them, are well-founded.
86 Since
those grounds are sufficient to justify the contested decision, there
is no need to examine the applicant’s complaints against the
superfluous ground set out in the second sentence of paragraph 102
of the contested decision, alleging that some of the intervener’s
goods (ketchup) are sold in supermarkets in Germany and Italy. The
Board of Appeal therefore correctly concluded, inter alia in
paragraph 102 of the contested decision, that the relevant
public could establish a mental link between the marks at issue.
The
risk of unfair advantage being taken from the reputation of the
McDONALD’S trade mark by the use without due cause of the contested
mark
87 At
the outset, it should be recalled that the establishment, on the part
of the public concerned, of a link between the trade marks involved
constitutes a condition which is necessary but not, of itself,
sufficient to establish the existence of one of the types of injury
against which Article 8(5) of Regulation No 207/2009
ensures protection for the benefit of marks with a reputation (see
judgment of 7 December 2010 in Nute Partecipazioni and
La Perla v OHIM — Worldgem Brands (NIMEI LA
PERLA MODERN CLASSIC), T 59/08, EU:T:2010:500, paragraph 30
and the case-law cited).
88 In
order to benefit from the protection introduced by Article 8(5)
of Regulation No 207/2009, the proprietor of the earlier
European Union mark must adduce proof that the use without due cause
of the mark, in respect of which a declaration of invalidity is
sought, takes unfair advantage of, or is detrimental to, the
distinctive character or the repute of the earlier European Union
mark (see, by analogy, judgment of 7 December 2010 in NIMEI
LA PERLA MODERN CLASSIC, T 59/08, EU:T:2010:500,
paragraph 31 and the case-law cited).
89 Just
one of those three types of injury suffices for Article 8(5) of
Regulation No 207/2009 to apply (see, by analogy, judgment of
7 December 2010 in NIMEI LA PERLA MODERN CLASSIC,
T 59/08, EU:T:2010:500, paragraph 32 and the case-law
cited) it being noted that both the Cancellation Division and the
Board of Appeal, in the contested decision, confined themselves to
holding that there was an injury consisting of taking unfair
advantage of the repute of the McDONALD’S trade mark.
90 The
applicant submits that the Board of Appeal made an error of
assessment, in the contested decision, in finding that the applicant
could take unfair advantage of the reputation of the McDONALD’S
trade mark through use without due cause of the contested trade mark.
It states that the contested decision is based on the incorrect
finding of the reputation acquired by the prefix ‘mc’ of the
McDONALD’S trade mark, combined with the name of a menu item or a
foodstuff. In those circumstances, it would be wrong to claim that
the contested mark, combining the prefix ‘mac’ with the word
‘coffee’, would be perceived by the relevant public as
reproducing the structure of the McDONALD’S trade mark. According
to the applicant, the Board of Appeal erred, in paragraph 99 of
the contested decision, in finding that, in so far as it only affixed
the contested mark on coffee and coffee packaging, there was no doubt
that the applicant was seeking to reproduce, identically, the
structure common to the ‘Mc’ family of trade marks. In that
regard, the applicant states that, in the present proceedings, EUIPO
and the intervener do not claim, moreover, that it chose the
contested mark in bad faith. Furthermore, the intervener has not
brought any infringement proceedings against it. The applicant
submits that a statement which it placed on the file of the
proceedings before EUIPO confirms that the contested mark was chosen
in good faith and that use of the mark to sell coffee is explained by
the fact that the element ‘coffee’ refers to those goods.
91 Finally,
the applicant complains that the Board of Appeal did not take market
realities into account even though, when the marks concerned are
actually used in that market, the proprietor of the earlier European
Union mark must provide evidence that the proprietor of the trade
mark in respect of which a declaration of invalidity is sought
actually takes unfair advantage of the reputation of its mark. The
Board of Appeal, it is claimed, overlooked the fact that, in
Bulgaria, Estonia, Cyprus, Latvia, Hungary and Poland, at least since
1994, the marks at issue have coexisted peacefully, even when, as in
Poland, the use of the contested mark has been intensive. According
to the applicant, it must be assumed that the reality of the market
is the same throughout the European Union. However, the fact that the
proprietor of the earlier trade marks has brought actions against the
proprietor of the trade mark in respect of which a declaration of
invalidity is sought is not, it is claimed, a factor which makes it
possible to find, on the part of the relevant public, that there is
confusion, the establishment of a link or an image transfer between
those trade marks. The applicant claims that the intensive,
prolonged, peaceful use made in good faith, alongside the McDONALD’S
trade mark, with a reputation for fast-food restaurant services, of
the contested trade mark covering basic coffee goods constitutes due
cause for use of that latter trade mark, for the purposes of
Article 8(5) of Regulation No 207/2009.
92 EUIPO
and the intervener dispute the applicant’s arguments and submit
that the Board of Appeal did not make an error of assessment, in the
contested decision, in concluding that the use without due cause of
the trade mark contested by the applicant takes unfair advantage of
the reputation of the McDONALD’S trade mark.
93 In
that regard, it should be noted that 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 in Intel
Corporation, C 252/07, EU:C:2008:655, paragraphs 35 and
36).
94 The
existence of an ‘advantage [taken unfairly] of the repute of the
earlier [European Union] trade mark’, within the meaning of
Article 8(5) of Regulation No 207/2009, does not require
that there be a likelihood of confusion or a likelihood of detriment
to the repute of that mark or, more generally, to its proprietor
(see, by analogy, judgment of 18 June 2009 in L’Oréal
and Others, C 487/07, EU:C:2009:378, paragraph 50).
This arises from the use by a third party of a mark similar to the
earlier European Union mark where, by that use, that third party
attempts to ride on the coat-tails of that mark 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 made by the proprietor of the European Union mark in order to
create and maintain the image of that mark (see, to that effect,
judgments of 18 June 2009 in L’Oréal and Others,
C 487/07, EU:C:2009:378, paragraph 50, and of 7 December
2010 in NIMEI LA PERLA MODERN CLASSIC, T 59/08,
EU:T:2010:500, paragraph 44 and the case-law cited).
95 In
order to determine whether the use of the mark in respect of which a
declaration of invalidity is sought takes unfair advantage of the
distinctive character or the repute of the earlier European Union
mark, it is necessary to make a global assessment, taking into
account all factors relevant to the circumstances of the case, which
include the strength of the mark’s reputation and the degree of
distinctive character of the earlier European Union mark, the degree
of similarity between the marks at issue and the nature and degree of
proximity of the goods or services concerned. As regards the strength
of the reputation and the degree of distinctive character of the
earlier European Union mark, the stronger that mark’s distinctive
character and reputation are, the easier it is to accept that
detriment has been caused to it. Furthermore, the more immediately
and strongly the European Union mark is brought to mind by the mark
in respect of which a declaration of invalidity is sought, the
greater the likelihood that the current or future use of the sign is
taking, or will take, unfair advantage of the repute of the earlier
European Union mark (see judgment of 7 December 2010 in NIMEI
LA PERLA MODERN CLASSIC, T 59/08, EU:T:2010:500,
paragraph 42 and the case-law cited).
96 The
proprietor of the earlier European Union mark is not required to
demonstrate actual and present injury to its mark for the purposes of
Article 8(5) of Regulation No 207/2009. When it is
foreseeable that such injury will ensue from the use which the
proprietor of the mark, in respect of which a declaration of
invalidity is sought, may be led to make of its mark, the proprietor
of the earlier European Union mark cannot be required to wait for
this actually to occur in order to be able to prohibit that use. The
proprietor of the earlier European Union mark must, however, prove
that there is a serious risk that such an injury will occur in the
future (see judgment of 7 December 2010, in NIMEI LA
PERLA MODERN CLASSIC, T 59/08, EU:T:2010:500, paragraphs 33
and 54 and the case-law cited).
97 Where
the proprietor of the earlier European Union mark has shown that
there is either actual and present injury to its mark or, failing
that, a serious risk that such injury will occur in the future, it is
for the proprietor of the mark, in respect of which a declaration of
invalidity is sought, to establish that there is due cause for the
use of that mark (see judgment of 7 December 2010 in NIMEI
LA PERLA MODERN CLASSIC, T 59/08, EU:T:2010:500,
paragraph 34 and the case-law cited).
98 In
the light of the rules referred to in paragraphs 93 to 97 above,
it is appropriate to consider the arguments of the parties directed
against the grounds which led the Board of Appeal, in the contested
decision, to endorse the findings of the Cancellation Division
according to which the use without due cause of the contested mark
unfairly took advantage of the repute of the McDONALD’S trade mark.
99 In
the present case, the Board of Appeal concluded, in paragraph 90
of the contested decision, that the relevant public was the relevant
public for the goods covered by the contested mark, namely the
general public within the European Union, with an average level of
attention. Furthermore, the Board of Appeal found, in paragraph 108
of the contested decision, that it was sufficiently established that
the use without due cause of the contested mark took unfair advantage
of the repute of the McDONALD’S trade mark. As is apparent in
paragraphs 102 to 108 of that decision, it indeed felt it was
highly likely that the contested mark rode on the coat-tails of the
McDONALD’S trade mark, in order to benefit from its power of
attraction, its reputation and its prestige, and exploited, without
paying any financial compensation, the marketing effort made by the
intervener in order to create and maintain the image of the
McDONALD’S trade mark. According to the Board of Appeal, all the
factors of the case made it possible to conclude that the relevant
public or a substantial part of it, could establish a mental link
between the marks at issue, in so far as, upon seeing the contested
mark affixed to the goods closely linked to those of the intervener,
it could be attracted by the fact that that mark had practically the
same prefix and reproduced the same structure as the McDONALD’S
trade mark and could associate that mark with the ‘Mc’ family of
marks, of which the McDONALD’S trade mark was the original trade
mark.
100 Therefore,
the Board of Appeal concluded that the use of the contested mark
could entail a transfer of the image of the McDONALD’S trade mark,
or of the characteristics which it projects, to the goods covered by
the contested mark. The relevant factors for its assessment were, as
stated in paragraphs 99 to 101 of the contested decision (i) the
considerable reputation of the McDONALD’S trade mark, (ii) the
distinctive character acquired by the prefix ‘mc’, combined with
the name of a menu item or foodstuff, for fast-food restaurant
services and goods on the menu of fast-food establishments, (iii) the
fact that the contested mark reproduced the same structure as ‘Mc’
family of marks and (iv) the fact that the goods and services in
question had a certain degree of similarity, because of the close
links between them.
101 As
EUIPO rightly observes, the applicant does not dispute the assessment
of the relevant public made by the Board of Appeal. Moreover, that
definition is correct and must be upheld. The products covered by the
contested mark are intended for the general public within the
European Union, which has an average level of attention. Moreover,
the McDONALD’S trade mark was registered on 16 July 1999, with
a prior right on the 1st April 1996 and enjoyed, in the European
Union, a considerable reputation for fast-food restaurant services
which, furthermore, is not disputed by the applicant (see
paragraph 16 above).
102 Regarding
the applicant’s complaint that the Board of Appeal could not, in
the contested decision, make a finding of the reputation acquired by
the prefix ‘mc’, combined with the name of a menu item or a
foodstuff, for fast-food restaurant services and goods on the menu of
fast-food establishments, it must be observed that this complaint was
rejected in paragraph 63 above. The Board of Appeal was right to
conclude that the considerable reputation of the McDONALD’S trade
mark extended to the characteristic elements of the ‘Mc’ family
of trade marks, without having to determine, as submitted by the
applicant, whether each of the marks constituting that family was a
mark with a reputation.
103 As
regards the applicant’s argument that it did not intend to
reproduce the structure common to the ‘Mc’ family of marks in the
contested mark, it was noted, in paragraph 67 above, that the
Board of Appeal had rightly held, in paragraphs 61 and 99 of the
contested decision, that the contested mark reproduced the ‘Mc’
family of marks. Whereas, for the reasons set out in paragraph 79
above, the Board of Appeal had no reason, in paragraph 99 of the
contested decision, to rely on the argument that the applicant
marketed, in practice, only coffee under the contested mark, nor to
conclude from that that the contested mark sought to reproduce the
‘Mc’ family of marks, the fact remains that the error thus
committed does not affect the legality of the contested decision. The
grounds in question are superfluous in that decision and do not alter
the conclusion, drawn in paragraph 61 of that decision, that the
contested mark reproduces the structure common to the ‘Mc’ family
of marks. The Board of Appeal was therefore right, in paragraph 99
of the contested decision, to find that the existence of a ‘Mc’
family of marks was a key factor to take into account when assessing
whether there was an unfair advantage.
104 As
regards the applicant’s complaint alleging the absence of a close
link between the goods and services in question, it should be
recalled, as already noted in paragraph 83 above, that, in
paragraphs 92, 95, 96 and 101 of the contested decision, the
Board of Appeal correctly held that there was a certain degree of
similarity between the goods and services in question, because of the
close links between them.
105 According
to the case-law cited in paragraph 95 above and in view of the
conclusions drawn, in paragraph 73 above, as to the relevance of
the factor relating to the existence of an ‘Mc’ family of marks,
all of the factors considered by the Board of Appeal were relevant
for an overall assessment of whether unfair advantage was taken of
the reputation of the McDONALD’S trade mark through the use of the
contested mark.
106 In
an overall assessment of all those factors, the Board of Appeal, as
already noted in paragraph 99 above, found that it was highly
likely that the contested mark rode on the coat-tails of the
McDONALD’S trade mark, due to the possible transfer, by the
relevant public, of the image of the latter or of the characteristics
which it projects, to the goods covered by the former.
107 As
regards the applicant’s complaint that the Board of Appeal did not
take into account the reality of the market when making that
assessment, it should be noted that the Board of Appeal only had to
examine, in accordance with the case-law already cited in
paragraph 96 above, whether the proprietor of the earlier
European Union mark had adduced prima facie evidence of a future
risk, which is not hypothetical, of unfair advantage. Such a
conclusion could be established on the basis of logical deductions
made from an analysis of the probabilities and by taking account of
the normal practice in the relevant commercial sector as well as any
other circumstance of the case (judgment of 10 May 2012
in Rubinstein and L’Oréal v OHIM,
C 100/11 P, EU:C:2012:285, paragraph 95).
108 As
is apparent from paragraph 99 above, the Board of Appeal
concluded, after an overall analysis of the relevant factors in the
present case, that there was a serious risk that the relevant public
would be able to associate the contested trade mark with the ‘Mc’
family of trade marks and establish a mental link between the marks
at issue, so that there was a serious likelihood that use of the
contested trade mark would take unfair advantage of the reputation of
the McDONALD’S trade mark.
109 In
so far as the applicant complains, inter alia, that the Board of
Appeal did not take into account the fact that the marks at issue had
peacefully coexisted in Bulgaria, Estonia, Cyprus, Latvia, Hungary
and Poland, at least since 1994, its arguments must be rejected. The
marks at issue cannot be regarded as being or having been in peaceful
coexistence for the precise reason that the intervener brought an
application for cancellation of the contested mark, invoking the
McDONALD’S trade mark. Furthermore, as that application was brought
less than seven months after the registration of the contested mark,
there could be no limitation in consequence of acquiescence, within
the meaning of Article 54(1) of Regulation No 207/2009, in
the present case. To the extent that, in the context of this
complaint, the applicant invokes, in practice, the peaceful
coexistence of the McDONALD’S trade mark, not with the contested
mark, but with some of its national marks, identical to the contested
mark, registered in Bulgaria, Estonia, Cyprus, Latvia, Hungary and
Poland, at least since 1994, it should be noted, as the intervener
correctly observed, that, even assuming that those marks have
coexisted peacefully since the respective entry of the Member States
concerned into the European Union, that does not demonstrate that
that coexistence was general and related to all of the national
marks, identical to the contested trade mark, registered by the
applicant within the European Union. In the present case, the
national decisions placed by the intervener on the case-file relating
to the proceedings before EUIPO demonstrate, on the contrary, that
the coexistence of the McDONALD’S trade mark and the applicant’s
national marks, identical to the contested mark, has not been
‘peaceful’ in Germany, Spain, Sweden and the United Kingdom, the
applicant’s national marks having been the subject of a number of
disputes before the courts of those Member States (see, to that
effect and by analogy, judgments of 3 September 2009, Aceites
del Sur-Coosur v Koipe, C 498/07 P,
EU:C:2009:503, paragraph 83, and of 8 December 2005
in Castellblanch v OHIM — Champagne
Roederer (CRISTAL CASTELLBLANCH), T 29/04, EU:T:2005:438,
paragraph 74).
110 In
any event, as the intervener correctly observes, the absence of a
serious risk that the relevant public in the Member States in
question would be able to associate certain other national marks of
the applicant, identical to the contested mark, with the ‘Mc’
family of marks and establish a mental link between those national
marks and the McDONALD’S mark cannot be inferred from the mere fact
that the intervener did not oppose the registration of those national
marks or apply for a declaration that they were invalid (see, to that
effect and by analogy, as regards the existence of a likelihood of
confusion, judgment of 11 May 2005 in Grupo
Sada v OHIM — Sadia (GRUPO SADA),
T 31/03, EU:T:2005:169, paragraphs 85 and 86), even where
there has been considerable use of those marks, as was the case,
according to the applicant, in Poland.
111 There
may be many reasons for this absence of a challenge, which are not
necessarily related to the objective perception that the relevant
public, in the Member States concerned, will have regarding the marks
concerned. In the present case, the applicant did not provide any
evidence that would rule out, in any event, that the general public
in Bulgaria, Estonia, Cyprus, Latvia, Hungary or Poland would be able
to associate the applicant’s national marks, identical to the
contested mark, with the ‘Mc’ family of marks and establish a
mental link between those national marks and the McDONALD’S trade
mark (see, to that effect and by analogy, judgment of 26 September
2012 in CITIGATE, T 301/09, not published,
EU:T:2012:473, paragraph 128 and the case-law cited).
112 The
complaint that the applicant makes, in essence, against the Board of
Appeal for failing to find, in paragraphs 114 to 116 of the
contested decision, that the applicant had due cause to use the
contested mark, remains to be examined.
113 It
follows from Article 8(5) of Regulation No 207/2009 that
the proprietor of a trade mark with a reputation may be obliged,
pursuant to the concept of ‘due cause’ within the meaning of that
provision, to tolerate the use by a third party of a sign similar to
that mark in relation to a product which is identical to that for
which that mark was registered, if it is demonstrated that that sign
was being used before that mark was filed and that the use of that
sign in relation to the identical product is in good faith (see, to
that effect and by analogy, judgment of 6 February 2014
in Leidseplein Beheer and de Vries, C 65/12,
EU:C:2014:49, paragraph 60).
114 In
the present case, in so far as the sign relied on by the applicant in
the present complaint corresponds to the contested mark, it should be
noted that the case-law cited in paragraph 113 above is not
applicable, for two reasons. On the one hand, as the intervener
correctly observes, the contested mark has not been used before the
McDONALD’S trade mark, the latter having been registered before the
contested mark. Furthermore, as already noted in paragraph 109
above, it cannot be held that the marks at issue have coexisted
peacefully precisely because the intervener defended its rights in
the McDONALD’S trade mark by bringing an application for a
declaration of invalidity of the contested trade mark within the
required time limits.
115 In
so far as the signs relied on by the applicant in this complaint
correspond to national marks, identical to the contested mark, that
it registered in Bulgaria, Estonia, Cyprus, Latvia, Hungary and
Poland, at least since 1994, it should be noted that, even assuming
that those marks have coexisted peacefully with the McDONALD’S
trade mark in the national markets concerned, that does not mean, as
noted in paragraph 109 above, that the applicant tolerates or
should tolerate the use of the contested mark throughout the European
Union market.
116 The
Board of Appeal therefore correctly found, in paragraphs 114 to
116 of the contested decision, that the applicant did not have just
cause to use the contested mark.
117 Since
none of the complaints raised by the applicant have been upheld, the
present action must be dismissed in its entirety.
Costs
118 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.
119 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 (First Chamber),
hereby:
1. Dismisses
the action.
2. Orders
Future Enterprises Pte Ltd to pay the costs.
Kanninen
|
Pelikánová
|
Buttigieg
|
Delivered
in open court in Luxembourg on 5 July 2016.
[Signature
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