JUDGMENT OF THE GENERAL COURT (First Chamber)
7 December 2010 ( *1 )
In Case T-59/08,
Nute Partecipazioni SpA, formerly Gruppo La Perla SpA,
La Perla Srl,
established in Bologna (Italy), represented by R. Morresi and A. Dal Ferro, lawyers,
applicants,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by L. Rampini, and subsequently by O. Montalto, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Worldgem Brands Srl, formerly Worldgem Brands – Gestão e Investimentos Lda, established in Creazzo (Italy), represented by V. Bilardo, M. Mazzitelli and C. Bacchini, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 November 2007 (Case R 537/2004-2) concerning invalidity proceedings between Nute Partecipazioni SpA and Worldgem Brands Srl,
THE GENERAL COURT (First Chamber),
composed of I. Wiszniewska-Białecka, President, F. Dehousse and H. Kanninen (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Registry of the Court on 7 February 2008,
having regard to the response of OHIM lodged at the Registry of the Court on 21 May 2008,
having regard to the response of the intervener lodged at the Registry of the Court on 9 May 2008,
having regard to the reply lodged at the Registry of the Court on 1 August 2008,
having regard to the rejoinder of the intervener lodged at the Registry of the Court on 20 October 2008,
having regard to the change in the composition of the First Chamber of the Court,
further to the hearing on 11 May 2010,
gives the following
Judgment
Background to the dispute
1
On 30 December 1997, the intervener, Worldgem Brands Srl, formerly Worldgem Brands – Gestão e Investimentos Lda, formerly Cielo Brands – Gestão e Investimentos Lda, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (OJ 2009 L 78, p. 1)).
2
The mark for which registration was sought is the word sign NIMEI LA PERLA MODERN CLASSIC.
3
The goods in respect of which registration was sought are in Class 14 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 corresponded, at the time of application, to the following description: ‘Jewellery, gold articles, watches; precious metals; pearls; precious stones’.
4
The mark applied for was registered on 21 July 1999.
5
On 15 April 2002, the first applicant, Nute Partecipazioni SpA, formerly Gruppo La Perla SpA, applied for a declaration that that registration be declared invalid pursuant, firstly, to Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009) on the ground that the registration was contrary to the absolute grounds for refusal laid down in Article 7(1)(a) and (b) of that regulation (now Article 7(1)(a) and (b) of Regulation No 207/2009) and, secondly, to Article 52(1)(a) of that regulation (now Article 53(1)(a) of Regulation No 207/2009) on the ground that the registration was contrary to the relative grounds for refusal set out in Article 8(1)(b) and Article 8(5) of that regulation (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).
6
The earlier marks relied on in support of the application for a declaration of invalidity, which are protected in Italy, are, inter alia:
—
the figurative mark la PERLA, registered under number 769 526, with effect from 20 March 1996, for the following goods in Class 25: ‘Swimwear, sportswear and clothing in general’, reproduced below;
—
the figurative mark la PERLA, registered under number 804 992, with effect from 8 October 1997, inter alia for the following goods in Class 14: ‘Jewellery products and watches’, reproduced below.
7
In support of its application for a declaration of invalidity the first applicant adduced documents before the Cancellation Division of OHIM consisting, inter alia, of lists of trade mark registrations, press articles, lists of shops bearing the ‘La Perla’ sign, as well as statistics relating to its turnover and its advertising costs in order to establish the reputation of its trade marks and the damage to them.
8
On 4 May 2004, the Cancellation Division declared the Community trade mark NIMEI LA PERLA MODERN CLASSIC invalid on the ground that the use of this trade mark could allow its proprietor to take unfair advantage of the reputation of the figurative trade mark la PERLA, covered by registration number 769526, within the meaning of Article 8(5) of Regulation No 40/94.
9
On 1 July 2008, the intervener filed an appeal with OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Cancellation Division.
10
By decision of 25 January 2005 (‘the first decision’), the First Board of Appeal of OHIM upheld the appeal of the intervener and annulled the decision of the Cancellation Division. It held that the Community trade mark NIMEI LA PERLA MODERN CLASSIC was not sufficiently similar to the la PERLA figurative mark covered registration number 769526, nor to the other trade marks set out in the application for a declaration of invalidity, to be able to conclude that there was a likelihood of confusion, as set out in Article 8(1)(b) of Regulation No 40/94, or a link between these trade marks for the purposes of applying Article 8(5) of Regulation No 40/94.
11
By application lodged at the Registry of the Court on 1 April 2005, the first applicant brought an action, registered as Case T-137/05, seeking annulment of the first decision and invoking: (i) infringement of Article 8(5) of Regulation No 40/94; (ii) infringement of Article 8(1)(b) of that regulation; and (iii) infringement of the obligation to state reasons. OHIM endorsed the form of order sought by the first applicant in so far as it sought annulment of the first decision, on the ground of misapplication of Article 8(5) and of Article 52(1)(a) of Regulation No 40/94.
12
By judgment dated 16 May 2007 in Case T-137/05 La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), not published in the European Court Reports (‘the judgment of the Court’), the Court upheld the first applicant’s action finding, firstly, that the repute of the earlier la PERLA trade mark covered by registration number 769526 was established and, secondly, that the Board of Appeal erred by finding that the earlier la PERLA trade mark, covered by registration number 769526, and the trade mark NIMEI LA PERLA MODERN CLASSIC were not sufficiently similar for a connection of such a kind as is required for the application of Article 8(5) of Regulation No 40/94. Hence, the Court annulled the first decision, without altering the assessment of OHIM regarding the condition that there must be a likelihood that the use without due cause of the trade mark NIMEI LA PERLA MODERN CLASSIC would allow its proprietor to take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the la PERLA mark, covered by registration number 769526, it being for OHIM to carry out that assessment (paragraphs 26, 33, 52 and 53 of the judgment of the Court).
13
On 18 September 2007, the Presidium of the Boards of Appeal of OHIM reallocated the case to the Second Board of Appeal.
14
By decision of 19 November 2007 (‘the contested decision’) the Second Board of Appeal of OHIM annulled the decision of the Cancellation Division. It found, firstly, that it had not been proven that the trade mark NIMEI LA PERLA MODERN CLASSIC could allow unfair advantage to be taken of, or be detrimental to, the distinctive character or the reputation of the earlier la PERLA mark covered by registration number 769526, and that therefore Article 8(5) of Regulation No 40/94 could not be applied. Then, exercising the powers of the Cancellation Division, it dismissed the application for a declaration of invalidity based on absolute grounds.
15
Finally, still exercising the powers of the Cancellation Division, in order to examine the application of Article 8(1)(b) of Regulation No 40//94, the Board of Appeal found that the ‘jewellery products and watches’ coming within Class 14 and covered by the earlier la PERLA trade mark under registration number 804 992, and the ‘Jewellery, gold articles and watches’ covered by the Community trade mark were identical or had a high degree of similarity, and there was a high degree of similarity in relation to the ‘precious metals; pearls; precious stones’ covered by the Community trade mark. The Board of Appeal found that there was a likelihood of confusion on the part of the Italian public regarding all the goods covered by the Community trade mark NIMEI LA PERLA MODERN CLASSIC, with the exception of pearls. Thus, according to the Board of Appeal, as the expression ‘la perla’ was exclusively descriptive and lacked any distinctive character with regard to pearls, a comparison could only be made between the figurative element of the earlier trade mark and the ‘nimei’ element of the Community trade mark and this comparison did not lead to a likelihood of confusion.
16
Consequently, the Board of Appeal upheld the application for a declaration of invalidity in relation to the following goods within Class 14: ‘Jewellery, gold articles, watches; precious metals; precious stones’. By contrast, it dismissed the application for a declaration of invalidity and confirmed the validity of the trade mark NIMEI LA PERLA MODERN CLASSIC for pearls, which also come within Class 14.
Forms of order sought by the parties
17
The first applicant and the second applicant, La Perla Srl, claim that the Court should:
—
annul and alter the contested decision on the ground of misapplication of Article 8(5) of Regulation No 40/94, together with infringement of Article 63(6) of Regulation No 40/94 (now Article 65(6) of Regulation No 207/2009) and Articles 73 and 74 of Regulation No 40/94 (now Articles 75 and 76 of Regulation No 207/2009);
—
in the alternative, annul the contested decision on the ground of misapplication of Article 8(5) of Regulation No 40/94, together with infringement of Article 63(6) and Articles 73 and 74 of Regulation No 40/94;
—
in the further alternative, annul and/or alter the contested decision on the ground of misapplication of Article 8(1)(b) of Regulation No 40/94, together with infringement of Article 63(6) and Articles 73 and 74 of Regulation No 40/94;
—
order OHIM and the intervener to pay the costs, including those incurred in the proceedings before the Board of Appeal of OHIM.
18
During the hearing the applicants restricted their third head of claim, which henceforth only concerns the first, third and fourth paragraphs of the operative part of the contested decision, formal note of which was taken in the minutes of the hearing. Thus, this head of claim does not relate to the second paragraph of the operative part of the contested decision, in which the Board of Appeal upheld the application for a declaration of invalidity in relation to the following goods that come within Class 14: ‘Jewellery, gold articles, watches; precious metals; precious stones’.
19
OHIM contends that the Court should:
—
dismiss the application;
—
order the applicants to pay the costs.
20
The intervener contends that the Court should:
—
dismiss the action and uphold the contested decision;
—
order the applicants to pay the costs.
Law
21
The applicants invoke, in essence, two pleas, the first based on infringement of Article 8(5) of Regulation No 40/94 and the second based, in the alternative, on infringement of Article 8(1)(b) of Regulation No 40/94.
22
It is appropriate to examine the first plea in law.
23
The applicants contend that the Board of Appeal infringed Article 8(5) of Regulation No 40/94. They allege, inter alia, that the Board of Appeal has failed to comply with the judgment of the Court, thereby also infringing Article 63(6) of Regulation No 40/94.
24
Furthermore, the applicants contend that the Board of Appeal did not take account of all the facts and evidence that they presented to the Cancellation Division, demonstrating both the detriment incurred and the undue advantage, as well as the use without due cause of the Community trade mark NIMEI LA PERLA MODERN CLASSIC, in breach of Article 74(1) of Regulation No 40/94 (now Article 76(1) of Regulation No 207/2009) and that, by failing to explain their alleged lack of relevance, the Board of Appeal also infringed its obligation to state reasons and Article 73 of Regulation No 40/94.
25
In their reply, the applicants also invoke infringement of the principles of the protection of legitimate expectations, legal certainty, equal treatment and good administration within the framework of the application of Article 8(5) of Regulation No 40/94.
26
OHIM and the intervener support the findings of the Board of Appeal, dispute the arguments of the applicants and consider that the Board of Appeal has duly complied with the judgment of the Court. In relation to the arguments presented by the applicants in their reply, the intervener contends, in the rejoinder, that those complaints are inadmissible on account of delay.
27
It should be borne in mind that, under Article 52(1)(a) of Regulation No 40/94 combined with Article 8(5) of that regulation, a Community trade mark is to be declared invalid, on application to OHIM, where there is an earlier trade mark as referred to in Article 8(2) of that regulation, if the Community trade mark and the earlier trade mark are identical or similar and if the Community trade mark is 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, it has a reputation in the Community and, in the case of an earlier national trade mark, it has a reputation in the Member State concerned and where the use without due cause of the Community trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
28
For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 40/94, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that trade mark and the Community trade mark, the invalidity of which is requested, must be identical or similar. Thirdly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use of the Community trade mark without due cause must lead to the likelihood that unfair advantage would be taken of the distinctive character or the reputation of the earlier trade mark, or that it would be detrimental to the distinctive character or the reputation of the earlier trade mark. Since those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, Case T-215/03 Sigla v OHIM — Elleni Holding (VIPS) [2007] ECR II-711, paragraphs 34 and 35; Case T-150/04 Mülhens v OHIM — Minoronzoni (TOSCA BLU) [2007] ECR II-2353, paragraph 55, and the judgment of the Court of 30 January 2008 in Case T-128/06 Japan Tobacco v OHIM — Torrefacção Camelo (CAMELO), not published in the European Court Reports, paragraph 45).
29
It should be pointed out that the various infringements covered by Article 8(5) of Regulation No 40/94, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between these two marks, that is to say, establishes a link between them even though it does not confuse them (judgment of 12 March 2009 in Case C-320/07 P Antartica v OHIM, not published in the European Court Reports, paragraph 43; order of 30 April 2009 in Case C-136/08 P Japan Tobacco v OHIM, not published in the European Court Reports, paragraph 25; see, by analogy, Case C-252/07 Intel Corporation [2008] ECR I-8823, paragraph 30 and the case-law cited there).
30
The existence of such a link in the mind of the public 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 40/94 ensures protection for the benefit of marks with a reputation (see, by analogy, Case C-487/07 L’Oréal and Others [2009] ECR I-5185, paragraph 37).
31
In order to benefit from the protection introduced by Article 8(5) of Regulation No 40/94, the proprietor of the earlier mark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark’ (see, by analogy, Intel Corporation, paragraph 37).
32
Just one of those three types of injury suffices for Article 8(5) of Regulation No 40/94 to apply (see, by analogy, L’Oréal and Others, paragraphs 38 and 42).
33
The proprietor of the earlier mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 40/94. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see, by analogy, Intel Corporation, paragraph 38).
34
Where the proprietor of the earlier 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 later mark to establish that there is due cause for the use of that mark (see, by analogy, Intel Corporation, paragraph 39).
35
Finally, the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, Intel Corporation, paragraphs 35 and 36).
36
In this case, it should be recalled that the Court had held, in its judgment, that the repute of the earlier mark covered by registration number 769526 (‘the la PERLA mark’) was established for lingerie and swimwear and that in so far as the goods covered by the la PERLA mark and those covered by the later mark belonged to adjacent market segments, that is, jewellery and women’s clothing, in the circumstances of the case, a certain degree of similarity between the marks at issue was sufficient for the Italian public to be able to make a connection between these two marks, of such a kind as is required for the application of Article 8(5) of Regulation No 40/94 (paragraphs 33 and 51 of the judgment of the Court).
37
Thus, it is necessary to examine the condition relating to the existence of a risk that the use without due cause of the mark NIMEI LA PERLA MODERN CLASSIC allows its proprietor to take unfair advantage of, or is detrimental to, the distinctive character or the reputation of the la PERLA mark.
38
The applicants contend that the three types of injury are present in this case. The first applicant adduced the following arguments and evidence before OHIM, as summarised in the contested decision:
—
In the autumn of 1999, the intervener created a swimsuit (bikini) with pearls, designed by Lorenzo Riva under the mark NIMEI LA PERLA. This bikini was presented at the most important fashion shows and the specialised press gave extensive coverage to the event. The unlawful nature of the use of the terms ‘la perla’, associated with the term ‘nimei’ was evident as it included elements of infringement of the la PERLA trade mark and was likely to cause confusion for the specialised press itself and even more so for consumers. The agency ANSA and Corriere della Sera were victims of such confusion;
—
In the spring of 2000 the intervener also presented the ‘jewel sweater’ created by NIMEI LA PERLA for Blumarine and announced the offering for sale of a twinset fringed with pearls at the cuffs. On this occasion also, the specialised press gave extensive coverage to the event;
—
The effect of confusion and misappropriation was also supplemented and completed by the advertising that was carried out by the intervener and Blumarine in relation to those fashion designs, as the advertising image chosen was based on the use of the term ‘perla’ and the reference to ‘perla chic’ on the promotional poster;
—
The infringement of the la PERLA trade mark and the persistent and intentional activity carried out by the intervener and aimed at causing confusion are clearly apparent from the elements set out above. Clearing taking advantage of the repute of the la PERLA trade mark in the world of fashion, the intervener offered certain items of clothing bearing the trade mark NIMEI LA PERLA (in fact registered as NIMEI LA PERLA MODERN CLASSIC), thus creating confusion on the part of persons in the sector concerned and, all the more so, on the part of the consumers.
39
It must be considered, first, whether the first applicant was able to demonstrate the existence of an unfair advantage taken from the distinctive character or the repute of the la PERLA mark.
40
The concept of ‘taking unfair advantage of the distinctive character or the repute of the earlier mark’, also referred to as ‘parasitism’ or ‘free-riding’, relates not to the detriment caused to the earlier mark but to the advantage taken by the third party as a result of the use of the identical or similar later mark. It covers, in particular, cases where, by reason of a transfer of the image of the earlier mark or of the characteristics which it projects to the goods identified by the identical or similar later mark, there is clear exploitation on the coat-tails of the mark with a reputation (see, by analogy, L’Oréal and Others, paragraph 41).
41
It should be noted that the advantage taken by a third party of the distinctive character or the repute of the earlier mark may be unfair, even if the use of the identical or similar later mark is not detrimental either to the distinctive character or to the repute of the earlier mark or, more generally, to its proprietor (see, by analogy, L’Oréal and Others, paragraph 43).
42
In order to determine whether the use of the later mark takes unfair advantage of the distinctive character or the repute of the earlier mark, it is necessary to undertake 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 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 mark, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. In addition, the more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the earlier mark or is, or will be, detrimental to them (see, to that effect and by analogy, Intel Corporation, paragraphs 67 to 69 and L’Oréal and Others, paragraph 44).
43
In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the earlier mark (see, by analogy, L’Oréal and Others, paragraph 45).
44
Where a third party attempts, through the use of a mark similar to a mark with a reputation, 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 and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark (see, by analogy, L’Oréal and Others, paragraph 49).
45
Thus, as is clear from the case-law, Article 8(5) of Regulation No 40/94 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of an earlier mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a mark having similarities to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the mark’s image (see, by analogy, L’Oréal and Others, paragraph 50).
46
In this case, the Board of Appeal found that the first applicant was not able to demonstrate this detriment. It referred to a bikini with pearls, designed by Lorenzo Riva under the mark NIMEI LA PERLA, presented at the most important fashion shows and extensively covered by the specialised press, as well as a twinset fringed with pearls at the cuffs and a ‘jewel sweater’ created by NIMEI LA PERLA for Blumarine. It observes that the use of the NIMEI LA PERLA trade mark for swimwear or other items of clothing in Class 25 is not relevant in this case since it concerns the registration of the trade mark NIMEI LA PERLA MODERN CLASSIC for items of jewellery included in Class 14. In any event, according to the Board of Appeal, the reference to ‘la perla’ on a bikini with pearls, on a ‘jewel sweater’ decorated with pearls or on a twinset fringed with pearls at the cuffs would seem, rather, to describe the material used exceptionally in these items, that is, the pearls.
47
The applicants contest these findings of the Board of Appeal. Furthermore, they point out that the Cancellation Division had found that the arguments and evidence supplied by the first applicant sufficiently established the unfair advantage that the use of the mark NIMEI LA PERLA MODERN CLASSIC was able to obtain from the repute of the PERLA mark and that OHIM had stated, in the response submitted in the framework of Case T-137/05, that the ‘analysis of the third condition … — the fact of taking unfair advantage of the distinctive character or the reputation of the earlier mark or being detrimental to them — once again, justified the claims of the [first] applicant’.
48
In its response, OHIM submits that there must be an assessment of whether use of the NIMEI LA PERLA MODERN CLASSIC trade mark for the goods it has been registered for can enable its proprietor to take unfair advantage of the distinctive character or the reputation of the la PERLA mark. The evidence adduced by the first applicant, however, concerns the use of the later mark for goods that, although decorated with pearls, are items of clothing, which might possibly constitute an infringement but was not a case of exploiting the reputation of the la PERLA mark.
49
The intervener submits that the first applicant has not adduced any evidence of a likelihood of parasitic exploitation of its mark or of an attempt to take advantage of its reputation or of its distinctive character. In any event, the facts referred to by the first applicant do not concern the goods in Class 14 covered by the trade mark NIMEI LA PERLA MODERN CLASSIC.
50
It is apparent from the documents submitted by the first applicant to the Cancellation Division that the specialised press and professionals of the sector thought that the items presented by the proprietor of the later trade mark with Lorenzo Riva and Blumarine, during the fashion shows, were connected to the first applicant and that there was a commercial relationship between the two companies.
51
For example, in relation to the presentation at the fashion shows in Milan, in September 1999, of a bikini with pearls designed by Lorenzo Riva on behalf of the intervener, an article that appeared in a national daily newspaper reads as follows: ‘Nor is Lorenzo Riva to be forgotten … the sponsors Nimei and La Perla are totally delirious …’, whereas the sponsor of the event was the intervener, which had created the pearl bikini in collaboration with Mr Riva. Likewise, in an article in the Corriere della Sera of 25 September 1999, it says under the photo: ‘With pearls. Public price: 2 billion. Lorenzo Riva’s pearl bikini for La Perla’. In relation to the twinset, an article dated 12 October 2000 can be read on a website (www.margherita.net) with the heading ‘Nimei – La Perla. The moment of joy. Nimei La Perla and Blumarine presented the BluVIP (Very Important Pearls)’.
52
It is true that these situations did not relate simply to pearls, but to a pearl bikini created by the designer Lorenzo Riva and bearing the trade mark NIMEI LA PERLA, a twinset fringed with pearls at the cuffs and a ‘jewel sweater’ created by NIMEI LA PERLA for Blumarine. In fact, therefore, all of these clothes included pearls as an essential element, for which the later trade mark was actually registered. Further, as can be seen from the above paragraph, it is evident that the pearls in fact constituted the ‘heart’ of those goods. Consequently, in these circumstances, the arguments of OHIM and of the intervener (see paragraphs 48 and 49 above) cannot succeed.
53
Furthermore, the impression that also emerges from the intervener’s advertising, which appears to be more related to jewellery products and, more specifically, to pearls, is that there is a connection or relationship between the ‘Nimei’ and ‘La Perla’ trade marks.
54
In these circumstances, an injury or a likelihood of an injury cannot be ruled out. As has already been noted above, the proprietor of the earlier mark is not required to demonstrate actual and present injury to its mark, but must prove that there is a serious risk that such an injury will occur in the future (see, by analogy, Intel Corporation, paragraph 38).
55
Finally, in order to determine whether the use of the NIMEI LA PERLA MODERN CLASSIC mark allowed its proprietor to take unfair advantage of the reputation of the la PERLA mark, it is appropriate to carry out a global assessment that takes account of all the relevant factors of the present case.
56
In this regard, it should be recalled, first, that the Court has already noted in its judgment (see paragraph 36 above) that it is not disputed that the la PERLA trade mark has a reputation for lingerie and swimwear, that there is a certain degree of similarity between the marks at issue and that the goods covered by the la PERLA mark, that is, women’s clothing, and those covered by the later mark, that is, pearls, belong to adjacent market segments. More specifically, in relation to reputation, it should be added that this can be considered to be very well established.
57
Finally, account should be taken of the fact that the pearls may be used in the production of swimwear and other women’s clothing, as is apparent from the documents adduced by the first applicant before OHIM. It is not inconceivable that the consumers of jewellery and, more specifically, of pearls, know the lingerie and swimwear marketed by the applicants. Furthermore, even if a likelihood of confusion between the two marks is not required to demonstrate that the later mark is taking unfair advantage of the earlier mark, such a likelihood is established in this case with regard to products from groups adjacent to the swimwear and lingerie covered by the mark la PERLA, that is, bikinis, twinsets and sweaters, all decorated with pearls, even if these clothes are not, in themselves, covered by the later trade mark.
58
It follows from the foregoing that the first applicant furnished proof to OHIM that the proprietor of the later trade mark took unfair advantage of the mark la PERLA or that, at least, there was a serious risk that such an injury would occur in the future.
59
It remains to be established whether the use of the later mark has, in this case, a due cause.
60
As stated in paragraph 34 above, where the proprietor of the earlier 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 later mark to establish that there is due cause for the use of that mark.
61
In this case, the intervener claimed, during the administrative procedure before OHIM, that there was a due cause for using the terms ‘la perla’ and this was evident: it related to jewellery made with pearls and the cause was connected to the need and the desire to indicate the common name of the material with which the jewellery had been made.
62
In the contested decision, the Board of Appeal found that, as it had not been established that the later mark could take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the la PERLA mark, it did not have to adjudicate on whether there is a likelihood of use without due cause of the later trade mark.
63
The applicants recall that the Cancellation Division had found that the cause invoked by the intervener was insufficient to justify the use and that, similarly, OHIM had pointed out, within the framework of Case T-137/05, that the intervener ‘[had] failed, during the administrative procedure, to present valid grounds to justify the use in question, thereby fulfilling the next condition required for protection going beyond just those goods designated by the trade mark’.
64
In the present proceeding before the Court, OHIM and the intervener have not presented arguments in reply to the arguments of the applicants regarding due cause.
65
It should be pointed out that the cause invoked by the intervener during the administrative procedure before OHIM is not sufficient to justify the use. In this regard, it should also be noted that the intervener has not even tried to present other justifications to the Court.
66
Finally, in relation to the decision of the Tribunale Civile di Modena (Civil Court, Modena) in Italy, invoked by the intervener to demonstrate that the episodes put forward by the applicants are not attributable to the intervener, it suffices to observe that the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system (Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47, and the judgment dated 23 September 2009 in Case T-409/07 Cohausz v OHIM — Izquierdo Faces (acopat), not published in the European Court Reports, paragraph 71). In any event, that decision is the subject of an appeal brought by the applicants and is, therefore, not yet definitive. Furthermore, it concerns a declaration of the fact of infringement of the la PERLA mark and unfair competition by the intervener rather than a declaration of invalidity on the basis of a provision analogous to Article 8(5) of Regulation No 40/94.
67
In these circumstances, it is established that the intervener tried, by using a mark similar to the la PERLA mark, 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 the marketing effort expended by the applicants in order to create and maintain the image of that mark. Thus, the advantage resulting from such use must be considered to have been unfairly taken of the repute of the la PERLA mark (see, to that effect and by analogy, L’Oréal and Others, paragraph 49). Moreover, this use occurred without due cause. Consequently, according to the case-law cited in paragraph 28 above, it is not necessary to adjudicate on whether there is another injury, as referred to in paragraphs 31 and 32 above.
68
Therefore, the Court finds that the Board of Appeal erred in its application of Article 8(5) of Regulation No 40/94 and there is no need to rule on the admissibility of the objections presented in the reply (see paragraphs 25 and 26 above).
69
Given that the Board of Appeal has already declared the invalidity of the later mark for all goods except pearls, it is appropriate to annul the contested decision only in so far as the application for a declaration of invalidity was dismissed, and the validity of the NIMEI LA PERLA MODERN CLASSIC mark confirmed, for pearls. Indeed, to the extent that a decision of the Board of Appeal upholds the claims of the party concerned, that party does not have the capacity to bring an appeal before the Court. Thus, to the extent that the Board of Appeal granted, in the operative part of the contested decision, the application for a declaration of invalidity, the applicants can no longer challenge it (see, to that effect, the order of 14 July 2009 in Case T-300/08 Hoo Hing v OHIM — Tresplain Investments (Golden Elephant Brand), not published in the European Court Reports, paragraphs 26 and 27).
70
In this regard it should be recalled that, given that the various grounds for invalidity all result in exactly the same outcome, if one of those grounds is well founded, that suffices for an application for a declaration of invalidity to be successful. Furthermore, where the Board of Appeal considers that one of the grounds for invalidity put forward by the party seeking a declaration of invalidity is well founded, but decides to examine and, if that be the case, to dismiss the other grounds of invalidity invoked, that part of the reasoning of its decision does not constitute the necessary basis for the operative part upholding the application for a declaration of invalidity, which is justified to the requisite legal standard by the ground for invalidity which was upheld (see, to this effect, order in Golden Elephant Brand, paragraphs 31 and 35).
71
Having regard to the above, there is no need to rule on the application for alteration of the contested decision, submitted in the framework of the first head of claim, nor on the heads of claim submitted in the alternative, nor on the other pleas in law.
Costs
72
Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Furthermore, under that provision, where there are several unsuccessful parties the Court shall decide how the costs are to be shared.
73
Under Article 87(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, or where the circumstances are exceptional, the Court may order that the costs be shared or that each party bear its own costs.
74
Finally, under the last subparagraph of Article 87(4) of the Rules of Procedure, the General Court may order an intervener to bear his own costs.
75
In the present case the applicants, OHIM and the intervener have partially failed in so far as the contested decision has been annulled in part.
76
In the circumstances of the present case, it is appropriate to order OHIM to pay, in addition to its own costs, 90 % of the costs of the applicants before the Court and all of the costs of the first applicant before the Board of Appeal. The applicants shall bear 10 % of their own costs before the Court. The intervener shall pay its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.
Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 19 November 2007 (Case R 537/2004-2) in so far as it dismissed the application for a declaration of invalidity and ordered Nute Partecipazioni SpA to bear its own costs;
2.
Dismisses the action as to the remainder;
3.
Orders OHIM to bear its own costs together with 90 % of the costs of Nute Partecipazioni and of La Perla Srl before the Court and all the costs of Nute Partecipazioni before the Board of Appeal;
4.
Orders Nute Partecipazioni and La Perla to bear 10 % of their own costs before the Court.
5.
Orders Worldgem Brands Srl to bear its own costs.
Wiszniewska-Białecka
Dehousse
Kanninen
Delivered in open court in Luxembourg on 7 December 2010.
[Signatures]
( *1 ) Language of the case: Italian.
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