Case C‑603/14 P

El Corte Inglés SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Appeal — Community trade mark — Application for the word mark The English Cut — Opposition by the proprietor of the national and Community word and figurative marks including the word elements ‘El Corte Inglés’ — Regulation (EC) No 207/2009 — Article 8(1)(b) — Likelihood of confusion — Article 8(5) — Risk that the relevant public will make a connection with a trade mark which has a reputation — Degree of similarity required’

Summary — Judgment of the Court (Ninth Chamber), 10 December 2015

1. Appeal — Grounds — Incorrect assessment of the facts and evidence — Inadmissibility — Review by the Court of the assessment of the facts and evidence — Possible only where the clear sense of the evidence has been distorted

   (Art. 256(1) TFEU; Statute of the Court of Justice, Art. 58, first para.)

2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an identical or similar earlier mark with a reputation — Protection of the earlier mark with a reputation extended to dissimilar goods or services — Conditions — Similarity of the marks concerned — Degree of similarity required

   (Council Regulation No 207/2009, Art. 8(1)(b) and (5))

1.  See the text of the decision.

   (see para. 31)

2.  Given that it is not apparent either from the wording of paragraphs 1(b) and 5 of Article 8 of Regulation No 207/2009 on the Community trade mark or from the case-law of the Court of Justice that the concept of similarity has a different meaning in each of those paragraphs, it follows, inter alia, that, if, in examining the conditions for the application of Article 8(1)(b) of that regulation, the General Court concludes that there is no similarity between the signs at issue, paragraph 5 of Article 8 also necessarily does not apply to the case in point. Conversely, if the General Court takes the view, in the context of that same examination, that there is some similarity between the signs at issue, such a finding is equally valid with regard to the application of both Article 8(1)(b) and Article 8(5) of that regulation.

   However, in a situation in which the degree of similarity in question does not prove to be sufficient to result in the application of Article 8(1)(b) of Regulation No 207/2009, it cannot be deduced from that that the application of paragraph 5 of that article is necessarily precluded.

   The degree of similarity between the signs at issue required by each of the paragraphs of that provision is different. Whereas the application of Article 8(1)(b) of Regulation No 207/2009 is conditional on a finding of a degree of similarity between those signs which is capable of giving rise to a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood of confusion is not, by contrast, necessary as a condition for the application of paragraph 5 of that article.

   Since Article 8(5) of Regulation No 207/2009 merely requires the similarity which exists to be capable of leading the relevant public to make a connection between the signs at issue, that is to say, to establish a link between them, but does not require that similarity to be capable of leading that public to confuse those signs, it must be held that the protection which that provision lays down in favour of marks with a reputation may apply even if there is a lower degree of similarity between the signs at issue.

   It follows that, if the examination of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 has shown that there is some similarity between the signs at issue, the General Court must, in order to ascertain, this time, whether the conditions for the application of paragraph 5 of that article are satisfied, examine whether, on account of the presence of other relevant factors such as the renown or reputation of the earlier mark, the relevant public is capable of establishing a link between those signs.

   Lastly, even if the General Court, after carrying out the examination as to whether there was any link between the signs at issue, had reached the conclusion that the conditions for the application of Article 8(5) of Regulation No 207/2009 were not satisfied on the ground that it was apparent from the examination of the conditions for the application of paragraph 1(b) of that article, that the relevant consumers were not in a position to make an immediate conceptual connection between the signs at issue, such a ground would be marred by an error in law. The types of injury referred to in Article 8(5) of that regulation do not require the connection which consumers are capable of making between the signs at issue to be immediate.

   (see paras 39-43, 50)