In a judgment delivered by the General Court of the European Union (the “Court”) on the 12 June 2024 in the case of Societe du Tour de France (“Plaintiff”) vs European Union Intellectual Property Office (“EUIPO”) and FitX Beteiligungs GmbH (“FitX”), the Plaintiff sought the annulment of a decision by the board of appeal of the EUIPO concerning the registration of an EU trademark.

Facts of the Case

On the 11 May 2017, FitX filed an application with the EUIPO for the registration of an EU Trademark for a figurative sign including the following text: “TOUR DE X” and claimed the colours black and orange. The mark applied for designated goods and services in classes relating to inter alia, clothing gear, games toys, training apparatus and sporting education services.

On 11 August 2017, the Plaintiff lodged a notice of opposition to the registration of the above-mentioned mark on the basis of various earlier rights including the international trademark designating Germany for the figurative mark “TOUR DE FRANCE”, the French word mark “TOUR DE FRANCE” and the EU word mark and figurative mark “LE TOUR DE FRANCE”

In its arguments the Plaintiff referred to Articles 8(1)(b) and 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark (the “Regulation”). Article 8(1)(b) provided that a trade mark applied for shall not be registered because of (i) its identity with, or similarity to, the earlier trade mark and (ii) the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.

Article 8(5) of the Regulation further provides that upon opposition by the proprietor of an earlier trademark, the trademark applied for shall not be registered where it is identical with, or similar to, the earlier trademark, where:

1. in the case of an earlier Community trademark, the trademark has a reputation in the Community and,
2. in the case of an earlier national trademark, the trademark has a reputation in the Member State concerned;

and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

On the 2 April 2019, the Opposition Division of the EUIPO rejected the notice of opposition filed by the Plaintiff in its entirety. The Plaintiff filed a subsequent appeal before the Board of Appeal of the EUIPO however this was also rejected on the grounds, that firstly there was no likelihood of confusion within the meaning of Article 8(1)(b) of the Regulation and, secondly, that the use of the mark applied for in respect of the goods and services covered by it was not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights within the meaning of Article 8(5) of the Regulation.

Following the decision of the board of appeal of the EUIPO, the Plaintiff sought redress before the Court against the contested decision and requested that this be overturned on the grounds of Article 8(1)(b) and Article 8(5).

Legal Considerations

The Court noted that the Plaintiff is making two principal pleas namely:

1. alleging infringement of Article 8(1)(b) in relation to the likelihood of confusion between the marks; and
2. alleging infringement of Article 8(5) in relation to the use of the mark as not being likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights.

Article 8(1)(b) – The Likelihood of Confusion of the Marks

The Court reiterated that the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed (i) globally, according to the relevant public’s perception of the signs and goods or services in question and (ii) taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered.

According to settled case-law, two marks are deemed to be similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects.

The Court noted that the Board of Appeal of the EUIPO took the view, that the rights at issue were visually similar to a low, or even very low, degree and, at most, phonetically similar to a low degree, and that they were not conceptually similar.

The Plaintiff rejected this reason and submitted that the common element ‘tour de’ is allegedly non-distinctive for the services concerned is irrelevant for the visual and phonetic analysis of the rights at issue. That common element is visually dominant and phonetically non-negligible in those rights. Furthermore, it argues, the rights at issue have a high degree of phonetic similarity in view of the overlap and the identical pronunciation of the first part of each one. Thus, the applicant maintains, the marks have a high degree of visual and phonetic similarity which could lead the relevant public to believe that the goods and services come from the same undertaking or, at the very least, from economically linked undertakings.

The Court explained that in the context of a global assessment of the likelihood of confusion, as a result of the low degree of distinctiveness of the only common element ‘tour de’, and of the low degree of similarity between the rights at issue, the relevant public will not confuse those rights, despite the identity or similarity of the goods and services in question and the enhanced distinctiveness acquired through use of the earlier rights for the services in respect of the organisation of cycling competitions.

In the light of the foregoing, it was held that the Board of Appeal did not err in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) and the first plea was rejected.

Article 8(5) – Gaining of an unfair advantage from or be detrimental to, from the repute of the earlier rights

At the outset the Court observed that for an earlier trademark to be afforded the broader protection under Article 8(5) of the Regulation, the following conditions must be satisfied:

1. the earlier trademark which is claimed to have a reputation must be registered;
2. that mark and the mark applied for must be identical or similar;

• the earlier trademark must have a reputation in the European Union, in the case of an earlier EU trademark, or in the Member State concerned, in the case of an earlier national trademark; and

1. the use without due cause of the mark applied for must lead to the risk that an unfair advantage might be taken of the distinctive character or the repute of the earlier trademark or that it might be detrimental to the distinctive character or the repute of the earlier trademark.

As these conditions are cumulative failure to satisfy one of them is sufficient to render that provision inapplicable.

The board of appeal took the view that the use of the mark applied for in respect of the goods and services covered would not be likely to take unfair advantage of or be detrimental to, the distinctive character or the repute of the earlier rights.

It first found that there was some similarity between the rights at issue. Secondly, it stated that the degree of enhanced distinctiveness acquired through use of the earlier word marks and of the earlier figurative mark for the services in respect of the organisation of cycling competitions demonstrated reputation within the meaning of Article 8(5) but that a high degree of reputation had not been proved. Thirdly, although it observed that there was a sufficient closeness between the goods and services covered by the mark applied for, on the one hand, and the services in respect of the organisation of cycling competitions covered by the earlier rights, on the other, it took the view that the relevant public would not make a mental connection between the rights at issue within the meaning of that provision.

There was no evidence that the enhanced distinctiveness acquired through use and the reputation of the earlier rights TOUR DE FRANCE and/or LE TOUR DE FRANCE extended to the element ‘tour de’ on its own. Moreover, in the mark applied for, that element did not refer to a tour of France, but to a tour of X.

The Plaintiff argued that the assessment of the Board of Appeal did not correctly assess the reputation of the earlier rights. In particular, the Board of Appeal required an above average or high degree of reputation to be proved. The Plaintiff submitted that the Regulation did not require such a degree of reputation, and, in any event, the evidence submitted was sufficient to demonstrate that the earlier rights had an exceptionally high reputation in the European Union for the goods and services in respect of which they are registered, including entertainment services.

The Court’s view was that the Plaintiff’s argument that the Board of Appeal failed to take due account of the immediate and obvious link between a mark starting with the expression ‘tour de’ for sporting events and related goods and the earlier exceptionally highly reputed mark (LE) TOUR DE FRANCE was entirely unfounded. The enhanced distinctiveness acquired through use and the reputation of the earlier rights TOUR DE FRANCE and LE TOUR DE FRANCE did not extend to the element common to the rights at issue, namely the element ‘tour de’.

Furthermore, despite the common expression ‘tour de’, the rights at issue were similar to a low degree only, and there was no likelihood of confusion within the meaning of Article 8(1)(b) of the Regulation. Therefore, the descriptive expression ‘tour de’, which is very commonly used in the context of cycling competitions will not lead the relevant public to perceive a link between the rights at issue, even if the reputation of the earlier rights were exceptionally high.

The Court concluded that the Plaintiff’s arguments are not such as to call into question the Board of Appeal’s finding, given that the relevant public would not make a connection between the rights at issue, and therefore the use of the mark applied for in respect of the goods and services that it covers was not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights, with the result that the necessary conditions laid down in Article 8(5) of the Regulation were not satisfied.

The Court therefore dismissed both pleas raised by the Plaintiff and confirmed the decision of the Board of Appeal of the EUIPO with costs against the Plaintiff.

Author: Saman Bugeja