Judgments nº T-477/04 of Court of First Instance of the European Communities, February 06, 2007

• Resolution Date: February 06, 2007
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-477/04

In Case T-477/04,

Aktieselskabet††††††af 21. november 2001, established in Brande (Denmark), represented by C. Barret Christiansen, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and G. Schneider, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM and intervener before the Court of First Instance being

TDK Kabushiki Kaisha (TDK Corp.), established in Tokyo (Japan), represented by A. Norris, Barrister,

ACTION brought against the decision of the First Board of Appeal of OHIM of 7 October 2004 (Case R 364/2003-1) concerning opposition proceedings between TDK Kabushiki Kaisha (TDK Corp.) and Aktieselskabet af 21. november 2001,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of R. GarcÌa-Valdecasas, President, J.D. Cooke and I. Labucka, Judges,

Registrar: B. Pastor, Assistant Registrar,

having regard to the application lodged at the Registry of the Court of First Instance on 14 December 2004,

having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 18 April 2005,

having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 18 April 2005, and

further to the hearing on 13 September 2006,

gives the following

Judgment

†Background

1††††††††On 21 June 1999, the applicant submitted an application for a Community trade mark to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L†11, p.†1).

2††††††††The trade mark for which registration was sought is the word mark TDK. The goods for which registration was sought are in Class 25 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. They correspond to the following description: -clothing, footwear, headgear-. On 24 January 2000, the trade mark application was published in the Community Trade Marks Bulletin No 8/2000.

3††††††††On 25 April 2000, TDK Kabushiki Kaisha (TDK Corp.) filed an opposition against the registration of the trade mark applied for.

4††††††††The opposition was based on the existence of a Community trade mark, together with 35 earlier national trade marks, which were registered for goods in Class 9 (in particular, -apparatus for recording transmission or reproduction of sound or images-).

5††††††††The earlier marks in question were either the word mark TDK, or the word and figurative mark reproduced below:

6††††††††The intervener based its opposition on Article 8(1)(b) and Article 8(5) of Regulation No 40/94. The opposition was directed against all the goods specified in the trade mark application. In order to establish the reputation of its earlier trade marks, the intervener submitted annexes, marked A†to R.

7††††††††By decision of 28 March 2003, the Opposition Division found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. It none the less upheld the opposition on the basis of Article 8(5) of that regulation and refused the application for a Community trade mark.

8††††††††On 27 May 2003, the applicant brought an appeal against the decision referred to above, pursuant to Articles 57 to 62 of Regulation No 40/94.

9††††††††By decision of 7 October 2004 (Case R 364/2003-1) (-the contested decision-), the First Board of Appeal of OHIM dismissed the appeal brought by the applicant, thereby confirming the decision of the Opposition Division.

†Forms of order sought

10††††††The applicant claims that the Court should:

-††††††††annul the contested decision;

-††††††††order OHIM to pay the costs.

11††††††OHIM and the intervener contend that the Court should:

-††††††††dismiss the action†;

-††††††††order the applicant to pay the costs.

†Law

†Arguments of the parties

†Arguments of the applicant

12††††††In support of its application, the applicant puts forward a single plea in law based on infringement of Article 8(5) of Regulation No 40/94.

13††††††The applicant-s primary submission is that the intervener has failed to establish that the earlier marks had a distinctive character or a reputation which would entitle them to the broader protection conferred by Article 8(5) of Regulation No 40/94.

14††††††In that regard, the applicant argues that the annexes submitted by the intervener in order to establish the reputation of its earlier marks have no probative value. Thus, the market survey provided by the intervener (Annex O) was undertaken immediately after the World Championships in Athletics in Gothenburg in 1995, that is to say, several years before the application for registration of the mark in question. The public awareness of the earlier marks may have diminished rapidly since then. The applicant adds that the survey concerned was commissioned by the intervener and cannot be considered as reliable as an independent survey. At the hearing, the applicant emphasised that Annex O gave no details as to the range of those questioned or of the number of visitors to the championships in question and did not take some types of answers into account. The applicant added that the intervener had drawn conclusions from Annex O that were manifestly incorrect, because they did not appear in the annex, to the effect that the level of knowledge of the earlier marks in the German, Swedish and United Kingdom populations was as high as 85%.

15††††††The applicant also notes that, according to OHIM-s settled practice, it is only very intensive marketing efforts that are capable of conferring a distinctive character or a reputation on a mark. While the annexes submitted by the intervener prove that the earlier marks have been used in certain countries within the Union on particular types of goods, they do not, however, satisfy the criteria laid down by the Court of Justice for establishing the reputation of the mark among the relevant public (Case C-375/97 General Motors [1999] ECR I-5421, paragraphs 26 and 27).

16††††††It must also be borne in mind that the details given by the intervener of its marketing costs show that these were spread over a large part of the Community. Thus, while Annexes A to R may be capable of establishing that the earlier marks were used in a large part of the Community over a particular period of time and were the subject of media exposure and sponsorship, they do not, however, prove that the earlier marks have acquired a distinctive character or a strong or lasting reputation.

17††††††At the hearing, the applicant accepted, in reply to a question from the Court, that Annexes A to R had to be considered as a whole. It none the less maintained that, even on that basis, those annexes were not capable of establishing the reputation of the earlier marks for the purposes of Article 8(5) of Regulation No 40/94.

18††††††The applicant also submits that, even if it were to be accepted that the distinctive character or the reputation of the earlier marks had been established, the other conditions for the application of Article 8(5) of Regulation No 40/94 are, in any event, not satisfied.

19††††††In that regard, the applicant first of all states that evidence of the taking of unfair advantage of the distinctive character or the reputation of the earlier marks, or of detriment done to those marks, which it is necessary for the intervener to show, has not been adduced.

20††††††On the basis of the annexes submitted by the intervener, it would appear that a wide range of the intervener-s goods is marketed only to a specialist section of the public, that is to say to professionals in the medical sector or industry. These are areas in which the applicant-s goods have been neither marketed nor sold. Although some of the intervener-s goods are marketed by it to final consumers among the general public, the applicant-s goods are, for their part, sold in other types of shops.

21††††††The fact that the intervener has already used the earlier marks in question on clothing has no effect on the above, because such use was only on athletes- identification numbers or on T-shirts of a distinct brand (for example, Adidas). In those circumstances, the earlier marks cannot be connected with clothing in the mind of the public, but are only associated with advertising or sponsorship campaigns.

22††††††In those circumstances, the applicant considers that the grant...