Insufficeinte aaffinitò merceologica tra abbiglaimentied orologi di lujsso: non raggiuntra la prova dell’abuso di notorietà o del danno ad essa

Trib. UE 18.01.2023, T-726/21, Rolex SA c. EUIPO-PWT A/S  nell’opposizione di Rolex (alta orologeria)  contro marchio simile per abbigliamento.

marchio dell’istante
anteriorità 1 dell’opponente Rolex

e

anteriorità 2 dell’opponente ROlex

<< it has already been held that jewellery and watches, even precious stones, one the one hand, and items of clothing, on the other, could not be regarded as similar (see, to that effect, judgments of 24 March 2010, 2nine v OHIM – Pacific Sunwear of California (nollie), T‑364/08, not published, EU:T:2010:115, paragraph 33 and the case-law cited, and of 10 October 2018, Cuervo y Sobrinos 1882 v EUIPO – A. Salgado Nespereira (Cuervo y Sobrinos LA HABANA 1882), T‑374/17, not published, EU:T:2018:669, paragraph 35 and the case-law cited). (…)

In addition, it must be pointed out that the fact that the goods at issue may be sold in the same commercial establishments, such as department stores, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see, to that effect, judgment of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 83 and the case-law cited).>>, §§ 25 E 31.

Sullo sfruttamento della e/o sul danno alla rinomanza:

<< 42   In order to benefit from the protection introduced by the provisions of Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must, first of all, adduce proof, either that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, or that it would be detrimental to that distinctive character or that repute (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 37).

43      In that regard, although the proprietor of the earlier trade mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009, it must, however, prove that there is a serious risk that such an injury will occur in the future (judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 75; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 38).

44      The Board of Appeal noted that, in order to demonstrate the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, the applicant had not submitted observations to it, but that, before the Opposition Division, it had argued that the intervener could take unfair advantage of the degree of recognition of the earlier composite mark on account of the fact that the signs at issue were almost identical and the immense reputation acquired by the earlier marks, which allegedly convey images of prestige, luxury and an active lifestyle. It found that, by those arguments, the applicant had in fact merely referred to the wording of Article 8(5) of Regulation No 207/2009, without submitting any coherent arguments as to why one of such injuries would occur. The Board of Appeal inferred from this that no injury referred to in that provision was established>>.