IP case law Court of Justice

Order of 14 May 2013, C-294/12 (Beatle)



ORDER OF THE COURT (Seventh Chamber)

14 May 2013 (*)

(Appeals – Community trade mark – Figurative mark containing the word element ‘BEATLE’ – Opposition by the proprietor of the Community and national word and figurative marks containing the word elements ‘BEATLES’ and ‘THE BEATLES’ – Refusal of registration by the Board of Appeal – Article 8(5) of Regulation (EC) No 40/94)

In Case C-294/12 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 8 June 2012,

You-Q BV, established in Helmond (Netherlands), represented by G.S.C.M. van Roeyen, advocaat,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis and I. Harrington, acting as Agents,

defendant at first instance,

Apple Corps Ltd, established in London (United Kingdom), represented by A. Terry, Solicitor, and F. Clark, Barrister,

intervener at first instance,

THE COURT (Seventh Chamber),

composed of G. Arestis, President of the Chamber, A. Arabadjiev and J.L. da Cruz Vilaça (Rapporteur), Judges,

Advocate General: J. Kokott,

Registrar: A. Calot Escobar,

having regard to the written procedure,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1        By its appeal, the company You-Q BV (formerly Movingpeople.net International BV, then Handicare Holding BV; ‘You-Q’) seeks to have set aside the judgment of the General Court of the European Union of 29 March 2012 in Case T-369/10 You-Q v OHIM – Apple Corps (BEATLE) (‘the judgment under appeal’), by which that Court dismissed its action for annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 31 May 2010 (Case R 1276/2009-2), given in opposition proceedings between Apple Corps Ltd and Movingpeople.net International BV (‘the contested decision’).

 Legal context

2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. Nevertheless, given that the relevant date in the present case is that on which the application for registration was filed (see, to that effect, Case C-88/11 P LG Electronics v OHIM [2011] ECR I-0000, paragraph 2), the present case is still governed by Regulation No 40/94, in any event as regards provisions which are not strictly procedural.

3        Article 8 of Regulation No 40/94 provides:

‘1.      Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

(a)       if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(b)       if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

2.      For the purposes of paragraph 1, ‘Earlier trade marks’ means:

(a)       trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i)      Community trade marks;

(ii)  trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trade Mark Office;

(iii) trade marks registered under international arrangements which have effect in a Member State;

(b)      applications for the trade marks referred to in subparagraph (a), subject to their registration;

(c)      trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6 bis of the Paris Convention.

4.      Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign,

(a)      rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b)      that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

5.      Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

 Background to the dispute

4        On 27 January 2004, Movingpeople.net International BV sought registration as a Community trade at OHIM of the sign:

5        The goods in respect of which registration was applied for are the following: ‘vehicles; apparatus for locomotion by land, air or water, in particular scooters, bicycles, motorcycles and wheelchairs, specially made for sick and disabled persons and other persons requiring assistance; parts and fittings for all the aforesaid goods, included in this class, in particular belts, harnesses, chairs and supports (cushions), safety systems for wheelchair occupants and systems for locking wheelchairs, including control apparatus’ in Class 12 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.

6        On 6 May 2005, Apple Corps Ltd (‘Apple Corps’) filed a notice of opposition against that application for registration under Article 8(1)(b), 8(4) and 8(5) of Regulation No 40/94.

7        The opposition was based on various earlier rights, protecting the goods and services referred to in paragraph 11 of the judgment under appeal, and included a number of Community and national registrations, a well-known earlier mark and an earlier mark used in the course of trade, relating to the signs:



BEATLES

8        The opposition was directed against all the goods and services covered by the mark applied for which, in the course of the proceedings, were restricted to the following list: ‘Wheelchairs electric, wheelchairs not-electric, wheelchairs hand-operated, specially made for disabled and or persons requiring assistance; scooters, scootermobiles, minicruisers, specially made for sick and disabled persons and other persons requiring assistance; parts and fittings for all the aforesaid goods, included in this class, in particular belts, harnesses, chairs and supports (cushions), safety systems for wheelchair occupants and systems for locking wheelchairs, including control apparatus; all the aforesaid goods specially made for disabled persons and other persons requiring assistance not included in other classes’.

9        By decision of 25 August 2009, the Opposition Division rejected the opposition in its entirety, finding that Article 8(1)(b) of Regulation No 40/94 was not applicable on the grounds that, first, the goods were clearly dissimilar, secondly, Apple Corps had failed to identify the earlier national law allegedly enabling it, pursuant to Article 8(4) of that regulation, to prohibit the use of the mark applied for, and, in any event, that provision did not apply given the difference between the goods concerned and, thirdly, the use of the sign was not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks within the meaning of Article 8(5) of Regulation No 40/94.

10      On 26 October 2009, Apple Corps filed a notice of appeal with OHIM against that decision.

11      By the contested decision, the Second Board of Appeal of OHIM (‘the Board of Appeal’) upheld Apple Corps’ appeal. Basing its decision exclusively on Article 8(5) of Regulation No 40/94, it found that the mark applied for could take unfair advantage of the repute of Apple Corps’ well-known marks.

 The proceedings before the General Court and the judgment under appeal

12      By application lodged at the Registry of the General Court on 2 September 2010, the appellant brought an action for annulment of the contested decision. In support of that action, it relied on two pleas in law. The first alleged infringement of Article 8(1)(b) of Regulation No 40/94 and the second alleged infringement of Article 8(5) of that regulation.

13      The General Court, by the judgment under appeal, dismissed the action as unfounded and ordered the appellant to pay the costs.

14      As regards the second plea, the General Court reviewed the conditions for the application of Article 8(5) of Regulation No 40/94.

15      First of all, the General Court stated, in paragraph 26 of the judgment under appeal, that although the primary function of a mark is that of an indication of origin, the mark also has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. Consequently, Article 8(5) of Regulation No 40/94 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (Case T-215/03 Sigla v OHIM – Elleni Holdings (VIPS) [2007] ECR II-711, paragraph 35).

16      As regards the reputation of marks, the General Court added, in paragraph 27 of the judgment under appeal, that, in order to satisfy that condition, the earlier mark had to be known by a significant part of the public concerned by the goods covered by that mark (Case C-375/97 General Motors [1999] ECR I-5421, paragraph 31) and, in paragraph 28 of that judgment, that, in order to assess whether such a condition had been satisfied, it was necessary to take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (General Motors, paragraph 27).

17      In paragraph 35 of the judgment under appeal, the General Court also stated that the existence of reputation had to be assessed not, as You-Q claimed, by reference to the public concerned by the mark applied for, namely a specialist public, but by reference to the public concerned by the earlier marks, namely the public at large, even if, in the circumstances of this case, those two sections of the public overlap, since the public at large also encompasses the specialist public. It added, however, that the public concerned by the mark applied for is taken into consideration in the context of the examination of whether any unfair advantage has been taken of the distinctive character or reputation of the earlier marks.

18      The General Court held, in paragraph 39 of the judgment under appeal, that the Board of Appeal was entitled to find that the earlier marks have a very substantial reputation.

19      Secondly, as regards the similarity of the signs at issue, that Court held, in paragraphs 41 to 45 of the judgment under appeal, that they are highly similar visually, phonetically and conceptually.

20      As regards the existence of a link between the signs at issue, the General Court took into consideration, in the first place, the similarity between those signs (judgment under appeal, paragraph 49) and, in the second place, held that the goods in respect of which those signs are registered are not similar but that there is an overlap between the sections of the public concerned, in so far as persons who use the appellant’s products are part of the public at large (judgment under appeal, paragraphs 50 to 53). In the third place, that Court held that the earlier marks have an enormous reputation for ‘sound records, video records and films’ and a lesser reputation for games and toys (judgment under appeal, paragraph 54). In the fourth place, the General Court upheld the Board of Appeal’s assessments as regards the existence of the earlier marks’ distinctive character (judgment under appeal, paragraphs 55 to 58). In the fifth place and lastly, applying by analogy Case C-408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, paragraphs 27 to 31, and Case C-252/07 Intel Corporation [2008] ECR I-8823, paragraphs 57 and 58, it pointed out that the implementation of the protection introduced by Article 8(5) of Regulation No 40/94 does not require the existence of a likelihood of confusion (judgment under appeal, paragraph 59).

21      In paragraph 60 of the judgment under appeal, the General Court thus confirmed the Board of Appeal’s reasoning according to which, notwithstanding the difference between the goods in question, there was a link between the signs at issue, since the mark applied for would call to mind the earlier mark with a reputation on the part of the relevant public.

22      As regards the unfair advantage taken of the distinctive character or the repute of the earlier marks, that Court stated, in paragraph 61 of the judgment under appeal, that, although the proprietor is not required to demonstrate present injury to its mark for the purposes of Article 8(5) of Regulation No 40/94, he must, however, prove that there is a serious risk that such an injury will occur.

23      In paragraph 63 of the judgment under appeal, the General Court pointed out that unfair advantage has been taken of distinctive character or repute where there is clear exploitation and free-riding on the coat tails of a famous mark or an attempt to trade upon its reputation.

24      In paragraph 65, it stated that, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to that mark for the purposes of Article 8(5) of Regulation No 40/94.

25      In paragraph 67 of the judgment under appeal, that Court, referring, in particular, to paragraph 36 of Intel Corporation, also pointed out that the existence of such injury, in so far as what is prohibited is the drawing of benefit from the earlier mark by the proprietor of the mark applied for, must be assessed by reference to average consumers of the goods for which the mark applied for is registered, who are reasonably well informed and reasonably observant and circumspect.

26      In paragraph 71 of the judgment under appeal, the General Court held that there may be an image transfer even though the goods are quite different. It is not altogether inconceivable that an association could be made between the signs at issue on the part of the relevant public and, even if there is no likelihood of confusion by that public, that it could be led to transfer the values of the earlier marks to the goods bearing the mark applied for.

27      The General Court held, in paragraph 76 of the judgment under appeal, that, as the appellant did not argue before the Board of Appeal the existence of due cause for the use of the mark applied for, the Board of Appeal could reasonably conclude that there was no due cause for the use of the mark.

28      Lastly, the General Court held, in paragraph 80 of the judgment under appeal, that, as the Board of Appeal’s decision was not based on Article 8(1)(b) of Regulation No 40/94, there was no need to adjudicate on the first plea in law.

 Forms of order sought by the parties before the Court

29      By its appeal, the appellant claims that the Court should:

–        set aside the judgment under appeal;

–        uphold its action for annulment of the contested decision;

–        in the alternative, refer the case back to the General Court;

–        order OHIM and Apple Corps to pay the costs, including those incurred at first instance.

30      Apple Corps and OHIM contend that the Court should dismiss the appeal and order the appellant to pay the costs.

 The appeal

31      Under Article 181 of the Rules of Procedure, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, dismiss the appeal by reasoned order without opening the oral procedure.

 Arguments of the parties

32      In the first place, You-Q calls in question certain parts of the account of the facts by the General Court inasmuch as the statement of the facts and the summary of the background to the dispute are incorrect. The appellant states that the General Court’s summary of the contested decision does not correctly reproduce the findings in that decision. The General Court stated that the Board of Appeal found that the goods were different whereas the Board of Appeal, in its decision, found that they were quite different.

33      You-Q also submits that the General Court failed to properly reflect the Opposition Division’s decision and the contested decision with regard to the establishment of the link that Article 8(5) of Regulation No 40/94 requires for its application. Consequently, the General Court incorrectly stated that the Board of Appeal found that ‘although the goods are dissimilar, the relevant public overlaps’ even though the Board of Appeal found that although the actual goods compared are very dissimilar, the two sets of relevant public overlap.

34      The appellant takes the view, moreover, that those statements are incomprehensible in view of Intel Corporation (paragraphs 46 and 47) and General Motors (paragraph 24) on which the General Court relies. Those judgments cannot, according to the appellant, serve as a basis inasmuch as they relate to the issue of assessing the reputation of a registered mark in relation to the relevant section of the public as regards the goods covered by that mark and not to that of an overlap between the relevant public.

35      In You-Q’s submission, the General Court did not therefore properly assess the existence of the required link and should have concluded that such a link is non-existent.

36      In the second place, You-Q disputes the ‘Law’ part of the judgment under appeal inasmuch as it includes further infringements of Article 8(5) of Regulation No 40/94.

37      You-Q submits that the General Court incorrectly reflected its arguments regarding the distinctiveness of the earlier marks. You-Q did not argue that the word ‘BEATLES’ does not have any distinctive character, but disputed the Board of Appeal’s assessment that the earlier mark is an invented word and is highly distinctive. In the appellant’s submission, it is not an invented word since it is derived from the word ‘beat’. It deduces from that that the General Court erred by not accepting an argument which had not been put forward.

38      According to You-Q, the General Court’s finding that OHIM correctly observed that the marks THE BEATLES and BEATLES do not merely refer to the English word ‘beat’, but combine the words ‘beat’ and ‘beetle’ in such a way as to create a very distinctive and original combination is therefore unfounded. Likewise, the General Court’s finding that the term ‘beatles’ has acquired its own distinctive character so that, when faced with the earlier marks, the public at large will immediately think of the eponymous group is inconsistent and not based on any evidence.

39      You-Q also criticises the statement that each mark has an economic value which is independent of and separate from that of the goods and services for which it is registered inasmuch as the protection conferred by Article 8(5) of Regulation No 40/94 is not dissociated from the goods and services for which the mark with a reputation is registered. Furthermore, the appellant takes the view that the General Court applied an interpretation of that provision which was incorrect and too extensive. It states that the judgment in Sigla v OHIM – Elleni Holdings (VIPS), on which the judgment under appeal is based, is contrary to that provision and Intel Corporation and Case C-487/07 L’Oréal and Others [2009] ECR I-5185.

40      According to You-Q, by stating that, according to the Board of Appeal, the public for which the earlier marks were intended was the public at large, the General Court erred since the Board found, in the contested decision, that ‘the “sound records, video records, films” and merchandising products (such as toys and games), for which the earlier marks enjoy a reputation and are distinctive, are addressed to the public at large.’

41      You-Q denies that it maintained that the distinctive character and reputation of the earlier marks had to be examined by reference to the public concerned by the mark applied for, namely a specialist public.

42      According to You-Q, the assessment made by the General Court, in paragraph 35 of the judgment under appeal, with regard to the relevant public, in particular the taking into account of overlaps in the public in assessing the reputation of an earlier mark, is contrary to Intel Corporation (paragraph 47) and to Article 8(5) of Regulation No 40/94. An overlap is not evident from the facts and the goods at issue are so dissimilar that the mark applied for is unlikely to bring the earlier marks to the mind of the relevant public.

43      Furthermore, You-Q submits that the General Court erred in holding that the Board of Appeal was right to find that the requirement of reputation had been satisfied. Apple Corps did not file any evidence to that effect.

44      According to You-Q, the General Court’s assessment regarding the similarity of the signs at issue goes beyond a proper assessment within the framework of Article 8(5) of Regulation No 40/94. It also calls into question the General Court’s finding as regards the required link.

45      Lastly, You-Q disputes the General Court’s assessment of the requirement of Article 8(5) of Regulation No 40/94 that unfair advantage be taken of the distinctive character or the repute of the earlier marks.

46      You-Q states, in this respect, that no evidence regarding the required serious risk was submitted.

47      You-Q also submits that, in view of the difference between the goods in question, no association can be made between the signs at issue on the part of the relevant public. Such an association could not, in any event, establish the necessary link as required, let alone the serious risk of taking unfair advantage.

48      Furthermore, no evidence has been provided of a link between the goods in question, a commercial advantage which You-Q derives from use or the intentional registration of the mark to create an association in the mind of the public with the earlier marks.

49      You-Q adds that the reasoning that the relevant public, on account of the handicap in question, is attracted to the positive image of the earlier marks does not establish that there is a serious risk of taking unfair advantage. Likewise, it is irrelevant that a part of the public targeted by the goods covered by the mark applied for belongs to the generation of persons who know the goods covered by the earlier marks.

50      Apple Corps submits that the General Court made no error of law or fact.

51      OHIM submits that the appeal is inadmissible in so far as, first, the appellant fails to explain clearly the errors of law made in the judgment under appeal and, secondly, the alleged errors made when applying Article 8(5) of Regulation No 40/94 – with regard to the reputation, the relevant public, the goods covered by the marks at issue and the link necessary for a finding of unfair advantage – in reality concern the assessment of the facts and not questions of law.

52      OHIM thus maintains that, according to the Court, inter alia in an order of 9 July 2010 in Case C-461/09 P The Wellcome Foundation v OHIM, paragraph 20, and in Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643, paragraph 23, the definition of the relevant public, the comparison of the signs and the assessment of their similarity are assessments of fact which cannot be reviewed on appeal. Likewise, OHIM takes the view that assessing the reputation of the earlier marks for the relevant public, establishing the nature of the respective goods to assess their similarity, and the global test for ascertaining the link required for a finding of unfair advantage are matters of fact.

53      In the alternative, if the appeal is considered to be admissible, OHIM submits that the appellant’s action is manifestly unfounded.

54      As regards the degree of similarity between the goods in respect of which the marks at issue have been registered and the existence of a link between those marks, OHIM, referring to the case-law of the General Court (Case T-67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS) ECR II-1825, paragraph 41, and Sigla v OHIM – Elleni Holdings (VIPS), paragraph 47), submits that an unfair advantage can only occur as the result of a link established in the mind of the public between the later sign and the earlier mark. The existence of that link must be appreciated globally, taking into account all factors relevant to the case and in particular the degree of similarity of the signs, the strength of the earlier mark’s distinctiveness and its reputation.

55      OHIM takes the view, in particular, that the General Court’s finding as to the overlap of the relevant publics is correct. Relying on paragraphs 48 to 53 of Intel Corporation, it states that the public can associate two marks only if it is likely to encounter both of them on the market, either simultaneously or at different times. It adds that the likelihood of association is particularly strong in the present case because the distinctiveness of the earlier marks is very strong.

56      OHIM therefore disputes the appellant’s arguments claiming that a difference in the nature of the goods automatically means that no finding of the requisite link can be made by the relevant public.

 Findings of the Court

57      It must be pointed out that, although You-Q does not put forward any pleas in support of its appeal, but sets out its criticisms of the judgment under appeal on a linear basis, it is possible to distinguish, in its arguments, those elements relating to the factual assessments made by the General Court from those relating to an alleged infringement of Article 8(5) of Regulation No 40/94.

58      In the first place, therefore, You-Q calls into question (i) the General Court’s reproduction of the background to the dispute and its arguments relating to the distinctive character of the earlier marks and (ii) the General Court’s factual assessments relating to the similarity of the signs at issue, the reputation of the earlier marks, the relevant public, the link which may be established between the mark applied for and the earlier marks, and the unfair advantage taken of the distinctive character or repute of the earlier marks, but without pleading any error of law in the judgment under appeal.

59      Under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on a point of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts. The appraisal of those facts thus does not, save where the facts are distorted, constitute a point of law subject, as such, to review by the Court of Justice on appeal (see, to that effect, Joined Cases C-280/99 P to C-282/99 P Moccia Irme and Others v Commission [2001] ECR I-4717, paragraph 78; Case C-16/06 Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 68; and Case C-335/09 P Poland v Commission [2012] ECR I-0000, paragraph 24), bearing in mind that a distortion must be obvious from the documents on the Court’s file, without there being any need to carry out a new assessment of the facts and the evidence (see order of 31 March 2011 in Case C-433/10 P Mauerhofer v Commission, paragraph 71).

60      Findings relating to the characteristics of the relevant public and its degree of attention, perception or attitude therefore represent appraisals of fact and are not consequently subject to review by the Court of Justice on appeal (see, to that effect, order in The Wellcome Foundation v OHIM, paragraphs 20 and 21).

61      Likewise, the assessment of the reputation of the earlier marks and of the link which the public may make between the mark applied for and the earlier marks constitutes, as OHIM submits, a matter of fact.

62      Lastly, You-Q calls into question the General Court’s assessment of certain items of evidence. Those items of evidence relate to the reputation of the earlier marks and to the existence, first, of a serious risk of taking unfair advantage, secondly, to a link between the goods at issue and, thirdly, to a commercial advantage which You-Q derives from the use of the mark to create an association in the mind of the public with the earlier marks.

63      It must be borne in mind, in that regard, that the Court does not have jurisdiction to re-examine the evidence which the General Court has accepted. Provided that the evidence has been properly obtained and the general principles of law and the rules of procedure in relation to the burden of proof and the taking of evidence have been observed, it is for the General Court alone to assess the value which should be attached to the evidence produced to it. Save where the clear sense of the evidence has been distorted, that appraisal does not therefore constitute a point of law which is subject as such to review by the Court of Justice (see, to that effect, order in Mauerhofer v Commission, paragraph 70).

64      As it has not been claimed that the facts or the clear sense of the evidence were distorted, You-Q’s arguments must therefore be rejected as manifestly inadmissible.

65      In the second place, You-Q pleads, in essence, infringement of Article 8(5) of Regulation No 40/94 in so far as the General Court held that there was an overlap of publics in spite of a difference between the goods covered by the mark applied for and those covered by the earlier marks. You-Q takes the view that the absence of similarity between those goods precludes any overlap on the part of the relevant publics. It deduces from this that the public is not able to make any link between the signs at issue and, therefore, that it cannot be established that any unfair advantage was taken of the distinctive character or the repute of the earlier marks.

66      Article 8(5) of Regulation No 40/94 expressly envisages a situation in which an opposition is filed against an application for registration of a mark for goods or services which are not similar to those covered by the earlier marks.

67      The Court has thus pointed out that Article 8(5) of Regulation No 40/94 expressly refers to the situation in which the goods or services are not similar (see, to that effect, judgment of 7 May 2009 in Case C-398/07 Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM, paragraph 34).

68      It must also be pointed out that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which they were registered and that, in such a case, the relevant section of the public as regards the goods or services for which the later mark is registered may make a connection between the marks at issue, even though that public is wholly distinct from the relevant section of the public as regards the goods or services for which the earlier mark was registered (see, to that effect, Intel Corporation, paragraphs 51 and 52).

69      The General Court was therefore right in holding that the publics overlapped in spite of a difference between the goods covered by the mark applied for and those covered by the earlier marks. Likewise, it could hold, without infringing Article 8(5) of Regulation No 40/94, that, while the goods are quite different, it is not altogether inconceivable that the relevant public could make an association between the signs at issue and that it could be led to transfer the values of the earlier marks to the goods covered by the mark applied for and, therefore, that it was likely that the appellant could take unfair advantage of the repute of the earlier trade marks.

70      It follows that the appellant’s arguments must be rejected as manifestly unfounded.

71      In light of the foregoing, the present appeal must be dismissed as in part manifestly inadmissible and in part manifestly unfounded.

 Costs

72      Under Article 138(1) of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings pursuant to Article 184(1) of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since You-Q has been unsuccessful and OHIM and Apple Corps have applied for You-Q to pay the costs, it must be ordered to pay the costs.

On those grounds, the Court (Seventh Chamber) hereby orders:

1.      The appeal is dismissed.

2.      You-Q BV shall pay the costs.

[Signatures]

* Language of the case: English.



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