Slechts een quote
Merkenrecht. Gemeenschapsmerk. Oppositieprocedure. Aanvrage gemeenschapsbeeldmerk PM PROTON MOTOR, eerder nationaal, Benelux en gemeenschapswoord- en beeldmerk PROTON. Relatieve weigeringsgrond, geen overeenstemmende goederen of diensten. Board of Appeal heeft slechts art 8(5) geciteerd inzake bewijsvoering van de schade aan reputatie van oudere merknamen, en nu (bij toetsing) volgt dat aan de cumulatieve eisen van art. 8(5) niet werd voldaan. Afwijzing van de klacht volgt.
34 Under Article 8(5) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for may also not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, that mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
35 Therefore, in order for an earlier trade mark to be afforded the broader protection of Article 8(5) of Regulation No 40/94, a number of conditions must be met. First, the earlier mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the Community, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, a failure to satisfy one of them will be sufficient to render that provision inapplicable (see judgment of 30 January 2008 in Case T‑128/06 Japan Tobacco v OHIM – Torrefacção Camelo (CAMELO), not published in the ECR, paragraph 46 and the case-law cited).
36 The Board of Appeal expressed the view, in paragraph 32 of the contested decision, that the applicant had not adduced evidence of the existence, in the present case, of one of the risks referred to by the fourth condition for the application of Article 8(5) of Regulation No 40/94, but had merely quoted that provision.
37 It must be stated that the applicant’s argument that the goods and services covered by the marks in question are in competition and that the target public includes professionals in the automotive sector, such as to establish a link between those marks, was not submitted before the departments of OHIM. In that regard, it must be borne in mind that, according to settled case-law, the purpose of actions before the Court is to review the legality of the decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94. It follows from that provision that facts which were not invoked by the parties before the departments of OHIM cannot be invoked at the stage of the appeal brought before the Court. It also follows from that provision that the Court cannot re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (judgment of 9 February 2010 in Case T‑113/09 PromoCell bioscience alive v OHIM (SupplementPack), not published in the ECR, paragraphs 11 and 12). That argument must therefore be rejected as being inadmissible.
38 Consequently, it must be held – as the Board of Appeal did – that the applicant did not submit before the departments of OHIM evidence likely to be taken into consideration in the assessment of the risk associated with the damage done to the reputation of the earlier marks. Given that one of the cumulative conditions for the application of Article 8(5) of Regulation No 40/94 has not been met, it is not necessary to examine the other conditions governing the application of that article.
