Judgment — ECLI:EU:T:2018:879
Date: 2018-12-06
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

Summary — Judgment of the General Court (Ninth Chamber) of 6 December 2018 1. EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Opposition proceedings — Examination restricted to the facts, evidence and arguments provided — Obligation on the parties to provide facts and evidence in support (Council Regulation No 207/2009, Art. 76(1)) 2. EU trade mark — Procedural provisions — Decisions of the Office — Observance of the rights of defence — Scope of the principle (Council Regulation No 207/2009, Art. 75, second sentence) 3. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment criteria (Council Regulation No 207/2009, Art. 8(1)(b)) 4. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Enhanced distinctiveness of the earlier mark — Assessment criteria — Taking into consideration relevant evidence to establish reputation (Council Regulation No 207/2009, Art. 8(1)(b)) 5. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative marks CCB and CB (Council Regulation No 207/2009, Art. 8(1)(b)) 6. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Assessment criteria (Council Regulation No 207/2009, Art. 8(1)(b)) 7. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Assessment of the distinctive character of an element of which a trade mark is composed — Enhanced distinctiveness of the mark — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) 1. See the text of the decision. (see paras 19, 20) 2. See the text of the decision. (see para. 22) 3. See the text of the decision. (see paras 32-34, 66) 4. The concepts of ‘reputation’ and ‘enhanced distinctiveness’ are closely related. The reputation of an earlier mark may contribute to its enhanced distinctiveness and, therefore, increase the likelihood of confusion between that mark and a mark applied for. It is apparent from the case-law that there is a difference of emphasis between the reputation and the enhanced distinctiveness of a trade mark, more than a difference in nature. First, the existence of an unusually high level of distinctive character, as a result of the public’s recognition of a mark on the market, necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009 on the European Union trade mark. Second, the relevant factors for assessing the acquisition of enhanced distinctiveness by use are the same as those relevant for assessing reputation, namely, in particular, the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, and the amount invested by the undertaking in its promotion. It follows that, for the purposes of assessing whether the earlier mark has enhanced distinctiveness, the Board of Appeal may rely on the elements put forward by the proprietor of that mark in order to establish its reputation. (see paras 39-41) 5. See the text of the decision. (see paras 46-48, 61-63, 67-69) 6. See the text of the decision. (see para. 50) 7. It is true that a distinction should be made between the assessment of the distinctive character of an element of a composite mark, which relates to the ability of that element to dominate the overall impression produced by the mark, and the analysis of the distinctive character of the earlier mark, which is linked to the scope of the protection afforded to such a mark. The distinctive character of an element of a composite mark is examined at the stage of assessing the similarity of the signs and the degree of distinctive character of the earlier mark is one of the elements to be taken into consideration as part of the global assessment of the likelihood of confusion. Furthermore, where a mark has distinctive character, that distinctive character must be ascribed to that mark as a whole and not automatically to all the elements of which it is composed. However, it still cannot be ruled out that the enhanced distinctiveness of a mark may be taken into consideration for the purposes of establishing, by means of a detailed analysis, the distinctive character of one of the elements of that mark. The enhanced distinctiveness and especially the reputation of a sign can play a role in determining the distinctive character of an element forming part of the sign at issue, in so far as the extensive awareness of the link established by that sign between the goods or services covered and a specific undertaking may influence the perception of the connections between the various elements making up the sign at issue, in particular the more distinctive character of some rather than others. (see paras 51, 52)