Judgment — ECLI:EU:T:2016:517
Date: 2016-09-20
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Czechia

Judgment of the General Court (Third Chamber) of 20 September 2016 — Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT) (Case T‑566/15) EU trade mark — Opposition proceedings — Application for registration of an EU figurative mark MERLIN’S KINDERWELT — Earlier national word mark KINDER — Relative ground for refusal — No similarity between the signs — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) 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 18, 19) 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 MERLIN’S KINDERWELT and word mark KINDER (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 22, 62-67) 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 — Assessment of the distinctiveness of an element composing a trade mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 24) 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 — Similarity of the marks concerned — Criteria for assessment — Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 25-27) 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 — Similarity of the marks concerned — Elements of a trade mark having a descriptive character (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 28) Re: ACTION brought against the decision of the First Board of Appeal of EUIPO of 16 July 2015 (Case R 1617/2014-1), relating to opposition proceedings between Ferrero and Excalibur City. Operative part The Court: 1. Alters the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 July 2015 (Case R 1617/2014-1) in such a way as to hold that the appeal brought by Excalibur City s.r.o. before the Board of Appeal is well founded and, consequently, that the opposition must be rejected; 2. Orders EUIPO to bear its own costs and to pay those incurred by Excalibur City; 3. Orders Ferrero SpA to bear its own costs.