Judgment — ECLI:EU:T:2017:871
Date: 2017-12-06
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

Judgment of the General Court (Third Chamber) of 6 December 2017 – Tulliallan Burlington v EUIPO – Burlington Fashion (Burlington) (Case T-122/16) (EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark Burlington — Earlier national word marks BURLINGTON and BURLINGTON ARCADE — Earlier EU and national figurative marks BURLINGTON ARCADE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Use in the course of trade of a sign of more than mere local significance — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — Unfair advantage taken of the distinctive character or the repute of the earlier trade marks — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001)) 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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para. 20) 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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Similarity of the marks concerned – Degree of similarity required (Council Regulation No 207/2009, Art. 8(5)) (see paras 21-23) 3. Approximation of laws – Trade marks – Directive 2008/95 – Service marks – Concept of retail trade – Shopping arcade’s services in relation to sales – Included (Directive du Parlement européen et du Conseil 2008/95) (see paras 33, 34) 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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Proof to be adduced by proprietor – Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 37, 39, 42) 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 38, 40, 41) 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 – Figurative mark BURLINGTON – Word marks BURLINGTON and BURLINGTON ARCADE and figurative marks BURLINGTON ARCADE (Council Regulation No 207/2009, Art. 8(5)) (see paras 43-45) 7. EU trade mark – Procedural provisions – Decisions of the Office – Observance of the rights of the defence – Scope of the principle (Council Regulation No 207/2009, Art. 75) (see paras 54, 55) 8. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade – Conditions (Council Regulation No 207/2009, Art. 8(4)) (see para. 56) 9. 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 66, 67) 10. 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 BURLINGTON – Word marks BURLINGTON and BURLINGTON ARCADE and figurative marks BURLINGTON ARCADE (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 69-72) Re: ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 11 January 2016 (Case R 2409/2013-4), relating to opposition proceedings between Tulliallan Burlington and Burlington Fashion. Operative part The Court: 1. Dismisses the action; 2. Orders Tulliallan Burlington Ltd to pay the costs.