Judgments nº T-223/15 of The General Court, Sixth Chamber, May 15, 2017

• Resolution Date: May 15, 2017
• Issuing Organization: Sixth Chamber
• Decision Number: T-223/15

(EU trade mark - Invalidity proceedings - EU figurative mark MORTON’S - Earlier non-registered national trade marks MORTON’S, MORTONS, MORTON’S CLUB, MORTONS CLUB, MORTON’S THE RESTAURANT, MORTONS RESTAURANT and M MORTON’S - Relative ground for refusal - Declaration of invalidity - Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009) In Case T-223/15,

Morton’s of Chicago, Inc., established in Chicago, Illinois (United States), represented by J. Moss, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being

Mortons the Restaurant Ltd, established in London (United Kingdom), represented by J. Barry, Solicitor, and P. Nagpal, Barrister,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 February 2015 (Case R 46/2014-1), relating to invalidity proceedings between Mortons The Restaurant and Morton’s of Chicago,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis, President, D. Spielmann (Rapporteur) and Z. Csehi, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 27 April 2015,

having regard to the response of EUIPO lodged at the Court Registry on 18 November 2015,

having regard to the response of the intervener lodged at the Court Registry on 6 November 2015,

having regard to the reassignment of the case to a new Judge-Rapporteur,

having regard to the change in composition of the Chambers of the General Court and the reassignment of the case to the Sixth Chamber,

having regard to the measures of organisation of procedure of 2 December 2016,

further to the hearing on 19 January 2017,

gives the following

Judgment

Background to the dispute

1 On 20 July 2004, the applicant, Morton’s of Chicago Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to 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 Registration as a mark was sought for the following figurative sign:

3 The goods and services in respect of which registration was sought are in Classes 29, 30 and 43 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 correspond, in relation to each of those classes, to the following description:

- Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;

- Class 30: ‘Rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; fruit sauces’;

- Class 43: ‘Services for providing food and/or drink; restaurant and bar services’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 36/2005 of 5 September 2005 and the trade mark was registered on 5 June 2010 under number 3951291.

5 On 30 January 2012, the intervener, Mortons The Restaurant Ltd, filed an application for a declaration of invalidity of the trade mark under Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and under Article 52(1)(b) of that regulation. The application for a declaration of invalidity was based on the non-registered trade marks MORTON’S, MORTONS, MORTON’S CLUB, MORTONS CLUB, MORTON’S THE RESTAURANT, MORTONS RESTAURANT and M MORTON’S, used in the course of trade in the United Kingdom. Those earlier trade marks covered the following services: ‘Entertainment; cabaret, night club, theatre, casino, gaming (primarily for entertainment) and social club services; organisation and provision of private members’ clubs; musical entertainment services; entertainment and education relating to wine and food appreciation; the organisation of wine and food tasting events’, as well as ‘services for providing food and drink; temporary accommodation; café and coffee bar services; food and drink preparation services; restaurant services; restaurant and bar services; wine club services; wine bar services; hiring of rooms for social functions’.

6 By decision of 22 October 2013, the Cancellation Division rejected the application for a declaration of invalidity on the grounds that the intervener managed Morton’s Club and was not the proprietor of the earlier non-registered trade marks, which belonged to the owners of that club. It also concluded that the applicant, who is the proprietor of the contested trade mark, did not act in bad faith.

7 On 23 December 2013, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.

8 By decision of 12 February 2015 (‘the contested decision’), the First Board of Appeal of EUIPO found that the intervener (the cancellation applicant) had invoked several non-registered trade marks in the United Kingdom and therefore relied on the law of passing off. It held that the intervener had sufficiently proved that it had acquired unregistered rights and goodwill in the earlier trade marks and that the use made of those non-registered trade marks was of more than mere local significance. It took the view that, taking into account, in particular, that the goods and services in question were partly identical and partly similar and that the signs at issue were identical, the condition of misrepresentation provided for in the UK law on passing off was also met. Finally, it noted that there was also a genuine likelihood of harm being caused. It concluded that the intervener had demonstrated that it met the necessary conditions under Article 8(4) of Regulation No 207/2009, read in conjunction with the UK law on passing off. The Board of Appeal therefore annulled the Cancellation Division’s decision and declared the contested EU trade mark registration invalid for all the goods and services in question. Moreover, it took the view that it was no longer necessary to assess the ground for invalidity based on Article 52(1)(b) of Regulation No 207/2009, relied on by the intervener (the cancellation applicant) concerning the applicant’s bad faith when filing the application for registration of the contested EU trade mark.

Forms of order sought

9 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

10 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

11 The applicant relies on two pleas in law in support of its action. The first plea in law alleges infringement of Article 8(4) of Regulation No 207/2009 on the basis that the contested decision was flawed. The second plea in law is based on the infringement of Article 52(1)(b) of the same regulation, which provides for the invalidity of an EU trade mark where the trade mark applicant was acting in bad faith when the trade mark application was filed.

12 Under Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, the existence of a sign other than a mark permits a finding of invalidity of an EU mark where that sign fulfils four conditions cumulatively: that sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of the application for registration of the EU trade mark; and, lastly, the right to the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than trade marks which may be relied on to dispute the validity of an EU trade mark throughout the European Union under Article 1(2) of Regulation No 207/2009. Given that the conditions set out in Article 8(4) of Regulation No 207/2009 are cumulative, it is sufficient that only one of those conditions not be satisfied for an application for a declaration of invalidity of EU trade marks to be rejected (judgments of 24 March 2009, Moreira da Fonseca v OHIM - General Óptica (GENERAL OPTICA), T-318/06 to T-321/06, EU:T:2009:77, paragraphs 32 and 47, and of 7 May 2013, macros consult v OHIM - MIP Metro (makro), T-579/10, EU:T:2013:232, paragraph 54).

13 The first plea in law consists, in essence, of five complaints, alleging, respectively, misinterpretation of the UK rules on passing off, the allegedly incorrect nature of the evidence, that the intervener does not own the goodwill, that there is no likelihood of misrepresentation and that the earlier right has only local significance.

The first complaint, based on the misinterpretation of the UK rules on passing off

14 The applicant submits that the rights deriving from the action for passing off are not the same as those derived from a registered trade mark and that the Board of Appeal incorrectly applied the case-law developed by UK courts.

15 First, the applicant submits that the Board of Appeal analysed the proprietor’s goodwill as relating to restaurant and bar services as well as entertainment and club services, whereas the goodwill should have been limited to the services of a private members’ club containing a restaurant and a bar and offering entertainment services.

16 EUIPO and the intervener dispute the applicant’s arguments.

17 It must be stated that the intervener operated a club known for providing restaurant, bar and entertainment services. Furthermore, as...