Case T‑624/13

The Tea Board

v

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

(OHIM)

‛Community trade mark — Opposition proceedings — Figurative mark Darjeeling — Earlier Community collective word and figurative marks DARJEELING — Relative grounds for refusal — Article 8(1)(b) and (5) of Regulation (EC) No 207/2009’

Summary — Judgment of the General Court (Eighth Chamber), 2 October 2015

1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Attention level of the public

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

2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark Darjeeling — Collective word and figurative marks DARJEELING

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

3. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar collective mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment

   (Council Regulation No 207/2009, Arts 8(1)(b), and 66(2) and (3))

4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment

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

5. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment

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

6. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar collective mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment

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

7. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks — Criteria for assessment

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

8. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Attention level of the public

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

9. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Figurative mark Darjeeling — Collective word and figurative marks DARJEELING

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

10. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Reputation of the mark in the Member State or the EU — Concept — Criteria for assessment

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

11. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Aim — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage

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

12. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Detriment to the distinctive character of the earlier mark — Burden of proof

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

13. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Detriment to the repute of the earlier mark

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

14. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark

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

1.  See the text of the decision.

   (see paras 24, 25)

2.  See the text of the decision.

   (see paras 30, 50, 53, 54)

3.  Under the combined provisions of Article 8(1)(b) and Article 66(3) of Regulation No 207/2009 on the Community trade mark, a collective Community trade mark enjoys like any other Community mark protection against any infringement resulting from the registration of a Community trade mark that involves a likelihood of confusion.

   While it is true that the essential function of a geographical indication is to guarantee to consumers the geographical origin of goods and the special qualities inherent in them, the same cannot be said of the essential function of a Community collective mark. The fact that the latter consists of an indication which may serve to designate the geographical origin of the goods covered does not affect the essential function of all collective marks as stated in Article 66(1) of Regulation No 207/2009, which is to distinguish the goods or services of the members of the association which is the proprietor of that mark from those of other associations or undertakings. Consequently, the function of a Community collective mark is not altered as a result of its registration under Article 66(2) of Regulation No 207/2009. More specifically, a Community collective mark is a sign allowing goods or services to be distinguished according to which association is the proprietor of the mark and not according to their geographical origin.

   Although Article 66(2) of Regulation No 207/2009 introduces an exception to Article 7(1)(c) of that regulation by relaxing the conditions for registration and allowing marks describing the origin of the goods covered to be registered, that regulation is applicable, pursuant to Article 66(3) thereof, unless otherwise expressly provided, to all Community collective marks, including those registered under Article 66(2) thereof.

   Consequently, since none of the provisions in the chapter of Regulation No 207/2009 dedicated to Community collective marks allows it to be inferred that the essential function of such marks, including those consisting of an indication which may serve to designate the geographical origin of the goods covered, is different from the essential function of Community individual marks, it must be held that the essential function of the former — as it is for the latter — is to distinguish the goods or services covered according to the specific body from which they originate and not according to their geographical origin.

   Where, therefore, in the context of opposition proceedings, the signs at issue are collective marks on the one hand and individual marks on the other, the comparison of the goods and services covered must be carried out using the same criteria as those which apply to an assessment of the similarity or identity of goods and services covered by two individual marks.

   (see paras 35, 41-43, 49)

4.  See the text of the decision.

   (see paras 36, 57, 58, 62)

5.  See the text of the decision.

   (cf. point 37)

6.  A collective mark cannot enjoy enhanced protection under Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, if it is found, in the context of the global assessment of the likelihood of confusion, that the similarity between the goods and services is not sufficient to give rise to such a likelihood. Accordingly, even in an assessment of the likelihood of confusion between Community collective marks and Community individual marks, the similarity of the signs at issue will not be capable, in the light of the principle of the interdependence of factors, of offsetting the lack of similarity between the product covered by the earlier trade marks and the goods and services covered by the mark applied for.

   (see para. 59)

7.  See the text of the decision.

   (see paras 66-68, 87, 88)

8.  For the purposes of applying Article 8(5) of Regulation No 207/2009 on the Community trade mark, the definition of the relevant public is a necessary prerequisite, just as it is for the purposes of applying Article 8(1) of that regulation. More specifically, it is with regard to that public that the similarity between the signs at issue, the possible reputation of the earlier trade mark and, lastly, the link between the signs at issue must be assessed.

   Moreover, the public to be taken into account for the purposes of assessing whether one of the injuries referred to in Article 8(5) of Regulation No 207/2009 exists will vary according to the type of injury alleged by the proprietor of the earlier mark. Thus, the relevant public with regard to whom the assessment of whether unfair advantage has been taken of the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services for which the later mark is requested. By contrast, the public with regard to whom the assessment of whether there is detriment to the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect.

   (see paras 70, 71)

9.  See the text of the decision.

   (see paras 72, 73, 85, 92, 93, 142-145)

10.  See the text of the decision.

    (see paras 75, 81, 82)

11.  See the text of the decision.

    (see paras 97, 134)

12.  See the text of the decision.

    (see paras 99-102)

13.  See the text of the decision.

    (see para. 114)

14.  See the text of the decision.

    (see paras 123-125)