Judgment — ECLI:EU:T:2014:840
Date: 2014-09-26
Language of the case: English
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Italy

Judgment of the General Court (Fifth Chamber) of 26 September 2014 — Arnoldo Mondadori Editore v OHIM — Grazia Equity (GRAZIA) (Case T‑490/12) Community trade mark — Opposition proceedings — Application for Community word mark GRAZIA — Earlier national figurative mark GRAZIA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Lack of similarity between the goods — Article 8(5) of Regulation No 207/2009 — Reputation — No link between the marks at issue 1. Community trade mark — Definition and acquisition of the Community 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 17-19) 2. Community trade mark — Definition and acquisition of the Community 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 between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 25) 3. Community trade mark — Definition and acquisition of the Community 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 — Need to establish a similarity between the designated goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 31) 4. Community trade mark — Definition and acquisition of the Community 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 — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions (Council Regulation No 207/2009, Art. 8(5)) (see paras 36, 37) 5. Community trade mark — Definition and acquisition of the Community 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 — Protection of well-known earlier mark extended to dissimilar goods or services — Condition — Reputation of the mark in the Member State or the EU — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 39) 6. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Re-examination of the facts in the light of evidence not previously submitted before OHIM bodies — Exclusion (Council Regulation No 207/2009, Art. 65) (see para. 43) 7. Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope (Council Regulation No 207/2009, Art. 64(1)) (see para. 45) 8. Community trade mark — Definition and acquisition of the Community 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 — Condition — Link between the marks — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 70, 71) 9. Community trade mark — Definition and acquisition of the Community 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 — Taking unfair advantage of the distinctive character or repute of the earlier mark — Word mark GRAZIA and figurative mark GRAZIA (Council Regulation No 207/2009, Art. 8(5)) (see paras 73-79) Re: ACTION for annulment of the decision of the Fourth Board of Appeal of OHIM of 6 September 2012 (Case R 1958/2010-4) relating to opposition proceedings between Arnoldo Mondadori Editore SpA and Grazia Equity GmbH. Operative part The Court: 1. Dismisses the action; 2. Orders Arnoldo Mondadori Editore SpA to pay the costs.