The Judgment of the General Court of 28 September 2016, in the case of The Lacamanda Group Ltd versus EUIPO and Nigel Woolley, interprets the conditions that must be satisfied to be afforded the broader protection under Article 8(5).

On 25 November 2005, Mr Nigel Woolley filed an application for registration of the word sign ‘HENLEY’ as an EU trade mark for Classes 9, 14 and 18 of the Nice Agreement. This was registered on 25 January 2007.

In 2009, The Lacamanda Group, filed an application for a declaration of invalidity against the mark, based on the fact that the contested mark constituted, firstly, a geographical indication of origin, secondly, lacked distinctive character, thirdly, consisted of an indication which has become customary in the current language of the trade and, fourthly, since the contested mark was very similar to its earlier marks (United Kingdom word mark ‘HENLEYS’, filed on 17 May 2005 and registered on 23 June 2006, for Classes 25 and 35; and the Community word mark ‘HENLEYS’, filed on 20 June 2006 and registered on 31 May 2007, for Classes 25 and 35) it adversely affected their reputation.

The Cancellation Division and the Fourth Board of Appeal found that the mark had not been registered in breach of Article 7(1)(b)(c) and (d) and Article 8(5) of Regulation No 207/2009.

The applicant puts forward three pleas in law: (i) infringement of Article 7(1)(c), (ii) infringement of Article 7(1)(b), and (iii), infringement of Article 8(5) of Regulation No 207/2009, respectively

Infringement of Article 8(5) of Regulation No 207/2009: the applicant submits, first, that the Board of Appeal analysed only one of the cumulative conditions for applying Article 8(5) of Regulation No 207/2009, failing to take into account the influence which the degree of similarity between the marks at issue and the strength of the earlier mark’s reputation, which are very considerable, would have on the risk of injury to the latter. Secondly, it submits that, given that the marks are almost identical and the substantial reputation of the earlier mark, the relevant public will establish a link between the two marks and will be confused as to the trade origin of the goods covered by the contested mark, which would damage the applicant’s exclusive rights.

The Court refers to the conditions that must be satisfied to be afforded the broader protection under Article 8(5).  First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, 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, failure to satisfy one of them is sufficient to render that provision inapplicable.

Thus, assessing whether the earlier trade mark has a reputation is an essential step in examining whether Article 8(5) of Regulation No 207/2009 is applicable.

In the present case, the Board of Appeal did not examine the reputation of the earlier mark and, consequently it infringed the provision, for which reason the Court upheld the action and annulled the decision of the Fourth Board of Appeal.