Judgment — ECLI:EU:T:2016:488
Date: 2016-09-15
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: France

Judgment of the General Court (Eighth Chamber) of 15 September 2016 — Arrom Conseil v EUIPO — Nina Ricci (Roméo has a Gun by Romano Ricci) (Case T‑359/15) EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark Roméo has a Gun by Romano Ricci — Earlier EU word marks NINA RICCI and RICCI — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or reputation of the earlier marks — Damage to reputation — Article 8(5) of Regulation No 207/2009 1. 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 — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 35, 50) 2. 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 mark Roméo has a Gun by Romano Ricci and word marks NINA RICCI and RICCI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 36, 37, 53, 54, 67-69, 77, 81) 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 — Similarity of the marks concerned — Criteria for assessment — Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 39, 40) 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 — Coexistence of earlier marks on the market — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 56) 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 59-62, 73) 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark — Relevant public (Council Regulation No 207/2009, Art. 8(5)) (see para. 63) 7. EU trade mark — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 207/2009, Art. 75, second sentence) (see para. 79) Re: ACTION brought against the decision of the First Board of Appeal of EUIPO of 13 April 2015 (Case R 1021/2014-1) relating to opposition proceedings between Nina Ricci SARL and Arrom Conseil. Operative part The Court: 1. Dismisses the action; 2. Orders Arrom Conseil to bear its own costs and pay the costs incurred by the European Union Intellectual Property Office and Nina Ricci SARL.