K&K Group v EUIPO - Pret a Manger (Europe) (Judgment) [2016] EUECJ T-2/16 (30 November 2016)

Judgment Background to the dispute On 3 May 2012, the applicant, K&K Group AG, filed with the European Union Intellectual Property Office (EUIPO) an application for protection within the European Union of international registration No 1113460, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). The registration in respect of which protection was sought is the following figurative sign: The goods and services in respect of which protection was sought are in Classes 29, 30, 35 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, for each of those classes, to the following description: – Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’; – Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’; – Class 35: ‘Advertising; business management; business administration; office functions; advice on the organisation and management of businesses, economic advice, organisational advice’; – Class 43: ‘Services for providing food and drink and temporary accommodation; services for providing food and drink in restaurants; food and drink catering’. The particulars of the international registration which are provided for in Article 152(1) of Regulation No 207/2009 were published in Community Trade Marks Bulletin No 85/2012 of 7 May 2012. On 18 December 2012, the intervener, Pret A Manger (Europe) Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to the application for protection of the international registration for the goods and services referred to in paragraph 3 above. The grounds relied on in support of the opposition were, inter alia, those set out in Article 8(5) of Regulation No 207/2009, on the basis, inter alia, of the following earlier rights: – EU figurative trade mark PRET A MANGER, which was filed on 1 April 1996 and registered on 3 March 2000 under No 127803 in respect of goods and services in Classes 29, 30 and 42 corresponding, for each of those classes, to the following description: ‘Meat, fish, seafood, poultry and game, preparations made from the aforesaid; preserved, dried and cooked fruits and vegetables; jellies, jams, preserves; eggs; milk and milk products; edible oils and fats; meat and vegetable extracts; gelatine; mushrooms; nuts; snackfoods; prepared meals; all being available for immediate consumption’ in respect of Class 29; ‘Salad dressing; coffee, tea; cocoa; sugar; rice; cereals; flour and preparations made from cereals; bread; pies and pasties; sandwiches; pasties and non-medicated confectionery; ices; honey; treacle; salt; mustard; vinegar; sauces; spices; cakes; prepared meals; all being available for immediate consumption’ in respect of Class 30; and ‘Self-service restaurants; restaurants; cafés; cafeterias; canteens; catering services’ in respect of Class 42, as reproduced below: – the United Kingdom word mark PRET, applied for on 2 June 1995 and registered on 19 November 1999 under No 2 022 695 in respect of goods and services in Classes 29, 30 and 43 corresponding, for each of those classes, to the following description: ‘Meat, fish, seafood, poultry and game, preparations made from the aforesaid; preserved, dried and cooked fruits and vegetables; jellies, jams, preserves; eggs; milk and milk products; edible oils and fats; meat and vegetable extracts; gelatine; mushrooms; nuts; snackfoods; prepared meals; all being available for immediate consumption; all included in Class 29’ in respect of Class 29; ‘Salad dressing; coffee, tea; cocoa; sugar; rice; cereals; flour and preparations made from cereals; bread; pies and pasties; sandwiches; pastries and non-medicated confectionery; ices; honey; treacle; salt; mustard; vinegar; sauces; spices; cakes; prepared meals; all being available for immediate consumption; all included in Class 30’ in respect of Class 30; ‘Self-service restaurants; restaurants; cafés; cafeterias; canteens; catering services’ in respect of Class 43. The opposition was based on some of the goods and services covered by the earlier rights and was directed against all of the goods and services covered by the international registration. On 11 September 2014, the Opposition Division upheld the opposition in its entirety on the basis of Article 8(5) of Regulation No 207/2009. Essentially, the Opposition Division found that genuine use of the earlier marks PRET and PRET A MANGER had been proved in respect of some of the goods and services in Classes 29, 30 and 43. In the light of the similarity of the signs, their reputation in the United Kingdom and the association existing between them, the Opposition Division found that the holder of the international registration would gain an unfair commercial benefit from the inevitable connection that consumers would make with the earlier rights. On 5 November 2014, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. By decision of 29 October 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the decision of the Opposition Division. First, the Board of Appeal took the view that the evidence adduced with regard to the earlier trade marks was sufficient to prove genuine use of those marks in respect of the following goods and services: ‘snackfoods; prepared meals; all being available for immediate consumption’ in Class 29; ‘coffee, tea; sandwiches; cakes; prepared meals; all being available for immediate consumption’ in Class 30; and ‘self-service restaurants; restaurants; cafés; cafeterias; catering services’ in Class 43. Furthermore, the Board of Appeal took the view that that evidence made it possible to conclude that in the United Kingdom PRET and PRET A MANGER were brands associated with a definite reputation and goodwill (contested decision, paragraphs 9 to 29). Secondly, as regards the comparison of the signs, the Board of Appeal concluded that the visual and phonetic coincidences between them made them similar and it found that the territory of the relevant public was that of the United Kingdom. The Board of Appeal also found that the earlier marks did not have any meaning for the relevant public. In the Board of Appeal’s view, UK consumers would not think of the word ‘manger’ in terms of a feeding vessel for horses. It took the view that the word ‘diner’, by contrast, would be instantly associated with the act of a person eating — such as a customer in a restaurant — or associated with an American-style restaurant (contested decision, paragraphs 30 to 35). Thirdly, the Board of Appeal examined the grounds put forward on the basis of Article 8(5) of Regulation No 207/2009. It found that the sign Pret A Diner would, if it were registered, result in unfair advantage being taken of the distinctive character of the earlier marks. According to the Board of Appeal, there was a risk that the image of the marks with a reputation would be transferred to the goods covered by the contested sign, and that the marketing of those goods would be made easier by the association with PRET or PRET A MANGER. Furthermore, the Board of Appeal found that the structure of the earlier sign PRET A MANGER was mirrored in the contested sign and that both of the earlier signs had a ‘French feel’ to them even if the consumer did not know exactly what they might mean. It took the view that the contested sign could therefore be perceived as an extension of the commercial activities of the proprietor of the earlier marks, which would provide the holder of the international registration with an unearned advantage. Finally, the Board of Appeal found that there was no indication of due cause within the meaning of Article 8(5) of Regulation No 207/2009 (contested decision, paragraphs 36 to 51). Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its application, the applicant puts forward two pleas in law. The first plea in law alleges infringement of Article 42(2) and (3) of Regulation No 207/2009, of Article 15(1) of Regulation No 207/2009 and of Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended. The second plea in law alleges infringement of Article 8(5) of Regulation No 207/2009. The first plea in law, alleging, in essence, lack of proof of genuine use The applicant submits that the Board of Appeal infringed Article 42(2) and (3) of Regulation No 207/2009, Article 15(1) of Regulation No 207/2009 and Rule 22 of Regulation No 2868/95 in finding that the intervener had provided proof of genuine use of the earlier marks. It relies on three arguments in support of that plea in law. First, it submits, the evidence adduced to show genuine use does not indicate the earlier mark to which it relates. The Board of Appeal should, however, have evaluated the proof of use separately for each mark. Similarly, the turnover figures provided in respect of the UK do not refer to the use of the earlier marks. For example, the turnover figures relating to beverages could relate to goods sold under either one of the earlier trade marks or under another mark. Second, the trade mark PRET A MANGER does not appear on the labels submitted with a view to establishing genuine use. Only the mark PRET is represented therein, superimposed on a star. Accordingly, the Board of Appeal should have questioned whether the distinctive character of the earlier word mark was affected by that representation. According to the applicant, the term ‘pret’ is not distinctive because of its descriptiveness and because the figurative element in the shape of a star appears in a dominant fashion and is reminiscent of the stars of the famous ‘walk of fame’ or of the red five-pointed star which is just as well known. Thirdly, the applicant submits, the Board of Appeal did not take account of the fact that several items of evidence did not relate to the relevant period or were undated. EUIPO and the intervener dispute the applicant’s arguments. Pursuant to Article 42(2) and (3) of Regulation No 207/2009, if the applicant so requests, the proprietor of an earlier national or EU trade mark who has given notice of opposition is required to furnish proof that, during the period of five years preceding the date of publication of the application, that trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier trade mark has at that date been registered for not less than five years. In the absence of proof to that effect, the opposition is to be rejected. If the earlier mark has been used only in relation to part of the goods or services for which it is registered, it will, for the purposes of the examination of the opposition, be deemed to be registered only in respect of that part of the goods or services. Pursuant to Article 15(1) of Regulation No 207/2009, if, within a period of five years following registration, the proprietor has not put the trade marks at issue to genuine use in the European Union in connection with the goods or services in respect of which they are registered, or if such use has been suspended during an uninterrupted period of five years, those trade marks are to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use. Rule 22(2) of Regulation No 2868/95 also states that, if the opposing party does not furnish proof of use of the earlier mark or show that there are proper reasons for non-use within the period prescribed by EUIPO, EUIPO is required to reject the opposition. According to Rule 22(3), proof of use must consist of indications concerning the place, time, extent and nature of use of the earlier trade mark for the goods and services in respect of which it is registered and on which the opposition is based. Furthermore, Rule 22(4) provides that the evidence of use is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and to statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009. When assessing whether use of a trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT) , T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul , C‑40/01, EU:C:2003:145 , paragraph 43). As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of time for which the mark was used and the frequency of use. In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (judgments of 8 July 2004, VITAFRUIT , T‑203/02, EU:T:2004:225, paragraphs 41 and 42, and of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON) , T‑334/01, EU:T:2004:223, paragraphs 35 and 36). Moreover, it should be stated that, pursuant to point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 and Article 42(2) and (3) of Regulation No 207/2009, read in conjunction, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH) , T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited). It is in the light of those considerations and of the arguments raised by the applicant in the context of the present plea that it is appropriate to examine the reasoning of the Board of Appeal in the contested decision. In the present case, it should be noted that, during the examination of the opposition before EUIPO, the intervener was requested to demonstrate that the earlier trade marks which formed the basis for the opposition had been put to genuine use in the European Union between 10 November 2007 and 9 November 2012 inclusive (‘the relevant period’). To that end, the intervener produced extensive evidence, the contents of which are summarised over five pages in paragraph 10 of the contested decision. That evidence included, inter alia, testimony from the intervener’s Finance Director, a list of 250 stores in the UK; several photographs of establishments, several illustrations of advertising, labels, packaging and storefronts, data concerning turnover figures relating to prior rights or to the intervener, newspaper clippings and documents on the recognition of the earlier trade marks by the relevant public. The review of those items was carried out by the Board of Appeal in paragraphs 12 to 18 of the contested decision and may be summarised as follows. In relation to the place of use, the Board of Appeal held, in paragraph 12 of the contested decision, that it was clear from the evidence presented that the intervener sold its products principally in the UK, where its main activities are based. Having regard to the contents of the file, it is appropriate to endorse that assessment, which, moreover, is not disputed by the parties. With respect to the duration of use, the Board of Appeal noted, in paragraph 13 of the contested decision, that, while some items of evidence related to a period prior to the relevant period, a mass of evidence pointed to use of the earlier trade marks between 10 November 2007 and 9 November 2012. Having regard to the documents in the case file, that assessment must be endorsed. In that regard, it should be noted that, before the Board of Appeal, the applicant had alleged that the majority of the press articles produced by the intervener did not fall within the relevant period and did not indicate whether the goods covered by the earlier marks were actually distributed and labelled with those marks. In response to that criticism, the Board of Appeal stated, first of all, in paragraph 20 of the contested decision, that many of those press articles did relate to the relevant period and were therefore relevant. That was the case in respect of 14 out of the 23 articles in national newspapers produced by the intervener with a view to establishing genuine use of the earlier marks. Furthermore, as regards the nine national press articles concerning the period prior to the relevant period, that is to say, a period running from 3 October 2004, the date of the oldest article, up to 18 August 2007, it is apparent, as stated in essence by the Board of Appeal in paragraph 20 of the contested decision, that, even though those articles were not a priori relevant because they preceded the relevant period, they could nevertheless indeed be taken into consideration as part of the assessment of all the facts and circumstances relevant to establishing whether the earlier marks had in fact been commercially exploited. Those articles made it possible, inter alia, to establish a clear growth in the turnover of the intervener, whose sales amounted to GBP 193 million in 2006 and would later be well above that amount and increase throughout the relevant period. In the present case, the applicant repeats the criticism previously made before the Board of Appeal, alleging, without further precision, that ‘several documents submitted fall outside the relevant period, respectively are not dated’ (see paragraph 20 above). Such a claim cannot suffice to call into question the above findings of the Board of Appeal regarding the relevance of the various items of evidence produced by the intervener, whether those items were intrinsically relevant when they related to the relevant period or whether they were only incidentally relevant, in the light of an overall assessment, when they related to a period prior to that period or when it was not possible to know to what period they related (see paragraphs 34 and 35 above). Accordingly, the Board of Appeal was correct in finding that, while some evidence related to a period prior to the relevant period, many elements testified to use of the earlier trade marks between 10 November 2007 and 9 November 2012. Regarding the nature of the use, the Board of Appeal noted, in paragraph 14 of the contested decision, that all of the evidence demonstrated use of both earlier trade marks for many, if not most, of the intervener’s goods and services. Such use was apparent from, inter alia, several advertising illustrations, labels, packaging and storefronts dating in particular from the years 2007 to 2012 and concerning many edible products, beverages and services for providing food and drink, and was confirmed by the testimony of the intervener’s financial director and extracts from the national newspapers. The Board of Appeal also noted, in paragraph 21 of the contested decision and in response to criticism made before it by the applicant, that the nature of the commercial offer presented under the marks PRET and PRET A MANGER was clearly set out in several items of evidence provided by the intervener. The Board of Appeal referred, in that regard, to evidence to which the applicant did not refer in its criticism, but which showed, inter alia, the use of the earlier trade marks in respect of the services in Class 43, such as photographs of establishments, or in respect of various goods in Classes 29 and 30, such as advertising illustrations, labels and packaging. Having regard to the documents in the case file, those assessments must be endorsed. In particular, given the content of that evidence, the applicant cannot argue that it is not possible to know to which earlier mark that evidence relates (see paragraph 18 above). In the present case, the Board of Appeal correctly assessed the proof of use against the evidence produced to that effect, which related clearly to either or both the earlier EU figurative mark PRET A MANGER and the earlier national word mark PRET, both of which were commercially exploited by the intervener. Similarly, in response to the claim that the turnover figures for the UK did not relate to use of the earlier trade marks, but might relate, for example, to drinks sold either under one of the earlier trade marks or under another mark (see paragraph 18 above), it must be stated that those turnover figures were mentioned by the intervener in respect of, firstly, both earlier trade marks and, secondly, the turnover achieved under the intervener’s company name broken down by product category (see contested decision, paragraph 10). In that regard, with respect to the turnover achieved under the intervener’s company name, the Board of Appeal correctly noted, in paragraph 23 of the contested decision, in response to the assertion that the use of the terms ‘pret a manger’ refers to the company of that name and not to the goods, that, although it is true that the purpose of a company name is to identify a company and not, of itself, to distinguish goods or services, use may be regarded as use in relation to goods where that company affixes the sign constituting its company name on goods which it sells, or where, even in the absence of affixing that sign, the company uses that sign in such a way that a link is established between the sign which constitutes the company name and the goods sold or services provided (see, by analogy, judgment of 11 September 2007, Céline , C‑17/06, EU:C:2007:497 , paragraphs 21 to 23 and the case-law cited). The turnover figures for the United Kingdom provided by the intervener were therefore relevant for the purpose of assessing the use of the earlier marks and the Board of Appeal was justified in taking them into account. It must also be noted that, in the contested decision, the Board of Appeal responded to the applicant’s criticisms of the representation of the earlier national word mark PRET on the labels presented by the intervener. On that point, the Board of Appeal noted, in paragraph 15 of the contested decision, that minor variations existed between the signs as registered and those actually used on the market: the PRET sign, for example, appeared in different formats, in particular in the form referred to by the applicant in paragraph 19 above, as reproduced below: However, in the same paragraph of the contested decision, the Board of Appeal correctly noted that, in accordance with Article 15(1)(a) of Regulation No 207/2009, the use of a trade mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered was regarded as genuine use. The Board of Appeal thus stressed the fact that, if the differences between the sign as it is used and the sign as it was registered are only negligible elements, strict compliance is not necessary; it is sufficient that the form in which the signs are used is broadly equivalent (see, to that effect, judgment of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE) , T‑194/03, EU:T:2006:65 , paragraph 50). In the present case, having regard in particular to what could be deduced from the assessment of the distinctiveness and reputation of the earlier national word mark PRET (see contested decision, paragraphs 26 to 29), the Board of Appeal was right to conclude, in paragraph 15 of the contested decision, that the figurative amendments to that national mark by the intervener did not alter its distinctiveness. As correctly noted by EUIPO in the present case, the word element in the PRET sign, and not the star — a common decorative element — on which that element was superimposed, was the dominant element of that sign. Lastly, as regards the extent of use, the Board of Appeal correctly noted, in paragraphs 16 to 18 of the contested decision, that account had to be taken, in particular, of the commercial volume of all the acts of use, on the one hand, and of the duration of the period in which those acts of use occurred, and of the frequency of those acts, on the other (judgment of 8 July 2004, HIPOVITON , T‑334/01, EU:T:2004:223, paragraph 35). In those circumstances, it was quite apparent that the earlier trade marks had been used extensively for many years in the United Kingdom, a sufficient territory for the purposes of assessing genuine use within the European Union, during and beyond the reference period. Having regard to the documents in the case file, it is appropriate to endorse that assessment, which, moreover, is not directly disputed by the parties. On that point, it should be noted, as the Board of Appeal, moreover, did in paragraph 19 of the contested decision, that the criticisms made by the applicant are essentially individual attacks on certain items of evidence. Those criticisms, which as such are already irrelevant, are not sufficient, in any event, to reverse what may be inferred from all of the evidence submitted by the intervener. In conclusion, the Board of Appeal did not err in finding, in paragraph 24 of the contested decision, that, pursuant to Article 42(2) and (3) of Regulation No 207/2009 and Rule 22 of Regulation No 2868/95, the intervener had proved genuine use of the two earlier trade marks relied on, on which the opposition was based, at least in respect of the following goods and services: ‘Snackfoods; prepared meals; all being available for immediate consumption’ for Class 29; ‘Coffee, tea; sandwiches; cakes; prepared meals; all being available for immediate consumption’ for Class 30; and ‘Self-service restaurants; restaurants; cafés; cafeterias; catering services’ for Class 43. Nor may the Board of Appeal be criticised on the ground that it infringed Article 15(1) of Regulation No 207/2009, as genuine use has been proved in the present case. In those circumstances, the first plea in law must be rejected as unfounded. The second plea in law, alleging breach of Article 8(5) of Regulation No 207/2009 The applicant submits that the Board of Appeal breached Article 8(5) of Regulation No 207/2009 by holding that the three conditions laid down by that provision had been met. Preliminary observations Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the mark applied for is to be refused registration where it is identical or similar to the earlier mark and where it is to be registered for goods and services which are not similar to those for which the earlier mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union 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 mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The purpose of Article 8(5) of Regulation No 207/2009 is not to prevent registration of any mark which is identical or similar to a mark with a reputation. The objective of that provision is, inter alia, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark or to take unfair advantage of that repute or distinctive character. In that connection, it should be stated that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. It must nonetheless produce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (judgment of 25 May 2005, Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS) , T‑67/04, EU:T:2005:179, paragraph 40). Moreover, although the protection conferred by Article 8(5) of Regulation No 207/2009 is primarily intended to be applied with regard to goods or services which are not similar, it may also apply where the goods or services designated by the marks at issue are identical or similar (see, to that effect, judgment of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU) , T‑150/04, EU:T:2007:214, paragraph 54 and the case-law cited). It is apparent from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: first, that the marks at issue are identical or similar; secondly, that the earlier mark invoked in opposition has a reputation; thirdly, the existence of a risk that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgments of 25 May 2005, SPA-FINDERS , T‑67/04, EU:T:2005:179, paragraph 30; of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS) , T‑215/03, EU:T:2007:93, paragraph 34; and of 29 March 2012, You-Q v OHIM — Apple Corps (BEATLE) , T‑369/10, not published, EU:T:2012:177, paragraph 25). With more specific reference to the third condition for the application of Article 8(5) of Regulation No 207/2009, this condition refers to three distinct and alternative types of risk, namely that use, without due cause, of the trade mark applied for would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The third type of risk referred to in that provision concerns the risk that the image of the mark with a reputation or the characteristics which it projects may be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods may be made easier by that association with the earlier mark having a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS , T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited). In that regard, it should be recalled that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (judgment of 12 March 2009, Antartica v OHIM , C‑320/07 P, not published, EU:C:2009:146, paragraphs 43 and 44). The existence of such a link must be subject to an overall assessment, taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of the likelihood of confusion on the part of the public (judgment of 12 March 2009, Antartica v OHIM , C‑320/07 P, not published, EU:C:2009:146, paragraph 45). It is in the light of those considerations and of the arguments raised by the applicant as part the present plea that it is appropriate to examine the reasoning of the Board of Appeal in the contested decision. The reputation of the earlier marks The applicant submits that the Board of Appeal erred in finding that the earlier trade marks enjoyed a reputation in the United Kingdom or in the European Union. The evidence produced in that regard, it argues, rarely refers to the expression ‘pret a manger’, the word ‘pret’ being frequently used alone to refer to the intervener. Nor is the evidence material. It does not indicate in an intelligible manner which of the earlier trade marks has a reputation and, if such a reputation exists, in relation to which types of goods and services. EUIPO and the intervener dispute the applicant’s arguments. In the present case, it must first be recalled that, in paragraph 29 of the contested decision, the Board of Appeal concluded its examination of the reputation of the earlier marks by noting that the intervener ‘is widely referred to simply as “PRET”, but also as “PRET A MANGER”’ and that it is ‘referred to in many of the press articles ... with a familiarity and assumption of common understanding that only a few brands own, justifiable being described as a “household name”’. In order to substantiate that finding, the Board of Appeal referred to several items of evidence, none of which, as such, is challenged by the applicant. First, the Board of Appeal noted, in paragraph 27 of the contested decision, that the evidence produced contained numerous statements by third parties concerning the nature and reputation of the opponent in the United Kingdom, including statements from high circulation national newspapers in the United Kingdom, SKY News and the BBC. Thus, in paragraph 28 of the contested decision, the Board of Appeal referred to two statements from national newspapers produced by the intervener. First, it was apparent from an article in the Telegraph of 24 February 2008 that the intervener ‘gave lunchtime a makeover while making sure people felt good about what they were eating’. Second, it was apparent from an article in The Observer of 8 April 2012 that Pret ‘has brought new lustre to that most traditional and British snack, the sandwich. It has smartened the sandwich up, given it a contemporary zip, made it not just respectable, but cherished and imitated’ and that it ‘has raised the bar for sandwiches, and forced other makers to do the same’. For the Board of Appeal, the phrase ‘cherished and imitated’ in relation to the earlier mark PRET was particularly telling and made it possible to hold that even consumers who did not eat regularly in the intervener’s establishments knew of it and would be aware of the trade mark’s reputation. Secondly, the Board of Appeal held, in paragraph 28 of the contested decision, that those statements and other evidence provided by the intervener, such as advertisements, turnover and testimony, presented a thoroughly convincing picture that, in the United Kingdom, the marks PRET and PRET A MANGER enjoyed a significant reputation. Thirdly, the Board of Appeal noted in the same paragraph that the foregoing conclusion relating to the reputation of the earlier marks was confirmed by two market studies produced by the intervener. First of all, the Allegra document entitled ‘Strategies Top of Mind UK Food & Beverage Sector (February 2010)’, which indicated that the PRET A MANGER brand was referred to as the ‘most admired brand’ in the food and beverage industry in 2009, having come in second in 2008, and that that brand was ‘revered for its product quality, consistency, forward thinking and superior execution’. Next, the document entitled ‘Allegra UK Food & Beverage Sector’, which referred to the intervener, in 2011, as one of the first establishments in the food segment based on the number of stores and indicated that it had become the number one in terms of annual sales in 2010 and 2011 by a considerable margin and an annual turnover more than three times greater than that of its main competitor. It was also stated that ‘Pret maintains its hold on the market with the highest turnover and strong growth, indicating high sales per store due to the fresh quality food offer, brand advocacy, as well as viable locations in high footfall areas’. Consequently, the Board of Appeal cannot be criticised for having concluded, on the basis of the evidence submitted by the intervener, that the earlier trade marks enjoyed a reputation in the United Kingdom, a sufficient territory in the present case for the purposes of assessing reputation within the European Union, with regard to the goods and services mentioned above. At the present stage, it must also be noted that, for the purposes of the assessment carried out under Article 8(5) of Regulation No 207/2009, once reputation had been established in the present case, the Board of Appeal was entitled to find, as it did, for example, in paragraph 38 of the contested decision, that that reputation ‘in the UK, is very significant’ and that ‘the image captured by [the intervener’s] brand is a very potent one and it occupie[d] a shared marketplace, for most of the goods of the international registration holder’, or again, in paragraph 43 of the contested decision, that ‘the earlier signs [were] extremely well known in the UK and [had] become virtual household names’ and, finally, in paragraph 48 of the contested decision, that ‘the earlier rights enjoy[ed] a near “iconic status” in the UK’. The similarity of the signs The applicant submits that the signs at issue are not sufficiently similar. EUIPO and the intervener dispute that contention. It may be noted at the outset that the applicant’s description of the signs to be compared matches that of paragraph 30 of the contested decision, in which the Board of Appeal set out in a table, on the one hand, the earlier signs, and, on the other, the sign represented by the international registration. Thus, as the applicant suggests, those signs may be described in the following way. The earlier figurative mark is composed of the words ‘pret a manger’ in white capital letters on a black background with a font which may be considered modern. The earlier word mark is written in capital letters. The international registration represents a figurative mark comprising five elements, namely three words and two vertical bars. There is a certain distance between the words because of the vertical bars separating them. Each word element begins with a capital letter, including the central word ‘a’, and the font used is similar to that of a typewriter. – The visual comparison of the signs First of all, the applicant maintains that the signs at issue were visually dissimilar, because the longest terms – ‘diner’ and ‘manger’ – were markedly different and the shared ‘pret’ and ‘a’ elements were not useful for comparison purposes, since it should not be possible to monopolise the ‘pret-a + word’ structure, which is frequently used and has meaning only when another word is added. According to the applicant, such a structure cannot lead to a finding of similarity or a likelihood of confusion, in particular because of the differences cited in paragraph 78 above. In the present case, it must be noted that the Board of Appeal was entitled to take the view, in paragraph 32 of the contested decision, that the signs were similar in so far as the word ‘pret’ was common to the three marks, and that the letter ‘a’ appeared in capital letters in the earlier EU trade mark and in the international registration. The Board of Appeal was also correct to point out in the same paragraph that the marks were distinguished by the word ‘manger’ in the earlier figurative mark and by the word ‘diner’ in the international registration, by a slight stylisation of the earlier EU trade mark, which consists of white capital letters arranged on a black background, and by the stylisation element of the letters of the contested mark, namely two vertical lines separating the words. In its analysis, the Board of Appeal thus duly noted both the similarities and the dissimilarities between the signs. However, contrary to the applicant’s assertion, there is no evidence to support the assertion that it was not possible to take account, for the purposes of the visual comparison, of the similarity between the signs resulting from the fact they had in common at least the word ‘pret’ and at most the words ‘pret a’. Such a similarity may indeed be taken into account in determining the degree of similarity which may exist between the marks at issue (see paragraph 62 above). Moreover, the applicant has still not shown that the ‘pret-a + word’ structure which it mentions is frequently used and has meaning only where another word is added to it. The frequent use of such a construction in the field of trade marks is not apparent from the file, in which the only rights referred to in this regard are those at issue in the present case. Similarly, since the term ‘pret’ is registered as an earlier national mark, there is no evidence that the combination ‘pret a’ may not also be registered and that it must necessarily be accompanied by a third word element. As to the possible meaning of the structure referred to by the applicant, it is appropriate on that point to refer to the conceptual comparison of the signs at issue, from which it is apparent that the English-speaking public will be unable to understand the meaning of the French expressions to which the various signs refer (see paragraph 91 below). Consequently, the Board of Appeal acted correctly in finding, for the purposes of the assessment carried out under Article 8(5) of Regulation No 207/2009, that there was in this case at least a certain visual similarity between the signs. – The phonetic comparison of the signs On the phonetic level, the applicant submits that the signs are also different given the difference in pronunciation of the longest element of the marks which include the terms ‘manger’ and ‘diner’. There are also, it submits, differences with the earlier word mark in terms of length, number of syllables, structure and intonation. In the present case, it is necessary to recall the assessment made by the Board of Appeal in paragraph 33 of the contested decision, in which the Board correctly noted, first, that the phonetic similarities reflect the visual similarities since the pronunciation of the signs is identical in respect of the word ‘pret’, present in the three marks, and the letter ‘a’, present in the earlier EU trade mark and in the international registration. Moreover, the Board of Appeal was also correct in properly noting, in the same paragraph, that the pronunciation differs in terms of the sound produced by the word ‘manger’, present in the earlier EU trade mark, and by the word ‘diner’, present in the international registration. In its analysis, the Board of Appeal thus duly noted both the similarities and the dissimilarities between the signs. Such an analysis thus enabled the Board of Appeal to note, for the purposes of the assessment carried out under Article 8(5) of Regulation No 207/2009, that there was at the very least a certain phonetic similarity between the signs. – The conceptual comparison of the signs Conceptually, the applicant submits that the earlier trade marks refer to French expressions which are not understood by UK consumers. Furthermore, even if they understood those expressions, the latter would have a totally different meaning. According to the applicant, however, the words ‘pret’ and ‘pret a manger’ should have been found by the Board of Appeal to be descriptive because they inform the consumer of the status of the goods or services requested. Those terms also have only a very low degree of distinctiveness. As a result of the widespread combination ‘prêt-à-porter’, it is easy to understand the meaning of ‘pret a’. By contrast, the term ‘diner’ does not convey fast food, but a meal taken late in the evening. As a result of the frequent use of the combination ‘pret a + word’, the words ‘manger’ and ‘diner’ make a sufficient distinction between the two expressions. In support of that argument, the applicant refers to a decision of 14 April 2014 by the Deutsches Patent und Markenamt (German Patent and Trade Mark Office), which held that the Pret A Diner and PRET A MANGER marks were different following a line of reasoning which should not have been ignored in the present case and which is based essentially on the fact that it was apparent from extracts from online dictionaries that the French expression ‘prêt à manger’ means ‘ready to eat’ and that it is therefore descriptive under the Markengesetz (German Law on Trade Marks), since the goods at issue are prepared for immediate consumption and the services relate to those goods. Consequently, the word element of that earlier mark should at the very least be regarded as having a very low degree of distinctiveness. At the hearing, the applicant also referred to a similar decision of 30 July 2016, which had just been adopted by the Russian Federal Intellectual Property Office. In the present case, it should be recalled that, with regard to the conceptual comparison, the Board of Appeal held, in paragraph 34 of the contested decision, that the earlier marks as a whole had no meaning for the public of the United Kingdom, the relevant territory, in which the intervener’s reputation was established. The Board of Appeal also pointed out in the same paragraph that the word ‘diner’ could be immediately associated with a person eating a meal, in principle a customer in a restaurant, or, given the very important influence of American English in the United Kingdom, with an American restaurant known as a ‘diner’. Consequently, the Board of Appeal did not refer to conceptual similarities when it analysed the similarity between the signs. The foregoing reasoning and the conclusion thereto are not called into question by the applicant, which shares the view that, for the relevant public, the signs at issue have no conceptual meaning. In order for that to be the case, it would be necessary for the English-speaking public to understand the meaning of the French terms ‘pret’, ‘a’ and ‘manger’, which are repeated without accents in the earlier trade marks PRET A MANGER and PRET, something which has not at all been demonstrated in the present case. The applicant relies to that end on the expression ‘prêt-à-porter’, which, it submits, is commonly understood by the English-speaking public. Aside from the fact that such an assertion is unsubstantiated, it should be noted that it incorporates elements other than those present in the earlier marks, namely accents and hyphens. In the present case, therefore, it has not been demonstrated that, as the applicant asserts, the relevant English-speaking public is able to understand the meaning of the terms ‘pret a manger’, ‘pret’ and ‘pret a diner’. Only the word ‘diner’ seems to be capable of being perceived by that public, as the Board of Appeal, moreover, acknowledges. Furthermore, as regards the argument derived from the decision of the German Patent and Trade Mark Office, it should be recalled that, according to settled case-law, the EU trade mark regime is an autonomous legal system which pursues objectives peculiar to it; it applies independently of any national system (judgments of 5 December 2000, Messe München v OHIM (electronica) , T‑32/00, EU:T:2000:283, paragraph 47, and of 3 December 2015, Infusion Brands v OHIM (DUALTOOLS) , T‑648/14, not published, EU:T:2015:930 , paragraph 36). Consequently, the registrability or protectability of a sign as an EU mark must be assessed by reference only to the relevant EU rules. Therefore, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or indeed in a third country, that the sign in question is registrable as a national trade mark (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47, and of 3 December 2015, DUALTOOLS , T‑648/14, not published, EU:T:2015:930 , paragraph 36). Moreover, and in any event, it must be pointed out that the decision of the German Patent and Trade Mark Office is based on an analysis of the perception by the relevant German public of the meaning of the signs to be compared. However, as the intervener submits, for the reasons set out in that decision, such a perception could be different from that which was put forward in the present case by the Board of Appeal in respect of the relevant English-speaking public. Consequently, the applicant’s argument based on the decision of the German Patent and Trade Mark Office or, by analogy — the applicant having merely referred to the existence of this second decision at the hearing, arguing that it was comparable to the German decision — on the decision of the Russian Federal Intellectual Property Office, as well as the remainder of its arguments, must be rejected. – Conclusion It follows from the foregoing that, having regard to the visual and phonetic similarities found by the Board of Appeal, the latter was in a position to conclude, in paragraph 35 of the contested decision, that the signs were similar as a result of an assessment carried out under Article 8(5) of Regulation No 207/2009. In that regard, it must be borne in mind that the assessment made under Article 8(5) of Regulation No 207/2009 merely requires that the similarity between the signs may lead the relevant public to establish a link between the signs at issue, but does not require that similarity to be capable of inducing the public to confuse those signs. Consequently, that provision may apply even though the signs at issue have a lower degree of similarity (see judgment of 10 December 2015, El Corte Inglés v OHIM , C‑603/14 P, EU:C:2015:807 , paragraph 42 and the case-law cited). Even where there is some similarity, even faint, between the marks at issue, the Court must still, under Article 8(5) of Regulation No 207/2009, carry out a global assessment in order to determine whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the general reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177 , paragraph 66). Unfair advantage The applicant submits that there is no relevant evidence to show that the sign sought would take unfair advantage of the earlier trade marks. The concerns set out in the contested decision are not, it argues, set out clearly or substantiated and remain vague. In the present case, a simple ‘French touch’ cannot justify a finding of a risk of unfair advantage, especially since France is famous for its food and wine. The same applies to the idea of including the descriptive combination ‘Pret a + word’ in a trade mark. The alleged risk that the contested sign may be perceived as an extension of the intervener’s activities, in the light, for example, of the use of the ‘pret a dormir’ combination for a hotel, is, it submits, erroneous and misleading. The intervener does not exploit any series of marks and many companies use the ‘pret a’ structure in a nod to France; the expression ‘pret a dormir’ is thus used for an online-shop for homewear, nightwear and bedding as illustrated by screenshots annexed to the application. EUIPO and the intervener dispute those arguments. As a preliminary point, it must be borne in mind that, contrary to what the applicant suggests when it refers to the ‘concerns set out’ in the contested decision, the proprietor of the earlier trade marks is not required to show, under Article 8(5) of Regulation No 207/2009, actual or present injury to its trade marks. It must simply adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (see paragraph 58 above). In the present case, and as is apparent from paragraphs 36 to 51 of the contested decision, the Board of Appeal duly set out the reasons why it was led to conclude that such a risk of unfair advantage arose from the evidence produced by the intervener. First of all, it should be recalled that the Board of Appeal stated, in paragraph 40 of the contested decision, that the infringements referred to in Article 8(5) of Regulation No 207/2009 were the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them. To that end, in the context of a global assessment of all the relevant factors, the Board of Appeal then noted, in paragraph 37 of the contested decision, that a similarity had been established between the signs and that the goods and services concerned, with the exception of those in Class 35, were either identical or similar, as was the relevant public. In the same paragraph, the Board of Appeal stated that, although the similarity between the signs was not sufficient to establish a likelihood of confusion, it was nevertheless sufficient to enable the relevant public to make a connection between the marks at issue within the meaning of Article 8(5) of Regulation No 207/2009 (see paragraphs 98 to 100 above). In paragraph 45 of the contested decision, the Board of Appeal also stated that there was a clear overlap in the relevant public for the goods and services protected by the marks at issue in the majority of cases and that this increased the risk of harm. According to the Board of Appeal, the risk was even present, albeit more limited, in respect of the services included in Class 35 of the international registration. In addition, the Board of Appeal also noted the very significant reputation of the earlier marks in the United Kingdom (see paragraphs 73 and 74 above). The image produced by those marks thus proved to be very powerful. Similarly, as is clear from paragraphs 26 and 38 of the contested decision, and contrary to what the applicant submits, in the absence of any evidence to suggest that the meaning put forward by the applicant could be perceived by the relevant public in the United Kingdom, it could not be held that the words ‘pret a manger’ were descriptive and that the intrinsic characteristics of the earlier mark PRET A MANGER were low. It was therefore appropriate to find, as the Board of Appeal did, that the image produced by that mark was inherently distinctive for the goods in question, which were for the most part shared with the goods of the holder of the international registration. Finally, as regards the risk that use without due cause of the mark applied for might take unfair advantage of the distinctive character or repute of the earlier marks, the Board of Appeal was entitled to find that there was such a risk in the present case. In the present case, as indicated in paragraphs 42 to 49 of the contested decision, given the image of the marks with a reputation or the characteristics which they project, there is a risk that the goods and services covered by the mark applied for may take unfair advantage of the efforts and investments made by the holder of the earlier marks. The applicant’s mark would thus be free-riding on the coat-tails of the earlier signs, with the marketing of its own goods and services being facilitated by the association with the PRET or PRET A MANGER trade marks. Contrary to what the applicant claims, such a risk may indeed be substantiated by the fact that the structure of the PRET A MANGER sign or the PRET sign, which the Board of Appeal noted had practically become household names in the United Kingdom, is included in the Pret A Diner sign. The reference in that respect to a ‘French touch’ is not in itself decisive, since it is stated clearly that the UK consumer may not know exactly what the PRET A MANGER or Pret A Diner trade marks mean. The fact remains that the reputation established in the present case nevertheless makes it possible to establish, as noted by the Board of Appeal, that it seemed more than probable that the Pret A Diner mark could be perceived by the average consumer as being a trade mark which is linked to the intervener. Similarly, the Board of Appeal was also correct in referring to the vision held by the media in the mid-2000s. When the intervener set up a hotel, it was humorously known as ‘pret a dormir’ in reference to the other goods and services marketed by the intervener. Such an illustration made it well possible to confirm the risk of image transfer referred to in the contested decision. In that regard, the applicant is unconvincing when it attempts to call into question the foregoing conclusions, which were reached by the Board of Appeal on the basis of an overall assessment which took account of all the relevant factors of the present case. Its line of argument fails, inter alia, to have regard for the reputation of the earlier marks and merely refers to a few unsubstantiated observations relating to the perception of the relevant public in the United Kingdom or based on screenshots of internet sites in sectors not relating to foodstuffs, but rather to clothing or photography. On that last point, it must be borne in mind that such documents, produced for the first time before the General Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009, with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it. The documents referred to above must therefore be rejected, without it being necessary to examine their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE) , T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited). In those circumstances, the second plea in law must be rejected as unfounded. Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. ON THOSE GROUNDS THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the appeal; 2. Orders K&K Group AG to pay the costs. Frimodt Nielsen Collins Valančius Delivered in open court in Luxembourg on 30 November 2016. E. Coulon H. Kanninen Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII