Judgment — ECLI:EU:T:2017:690
Date: 2017-10-05
Language of the case: English
Court formation: First Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Netherlands

Judgment of the General Court (First Chamber) of 5 October 2017 — Forest Pharma v EUIPO — Ipsen Pharma (COLINEB) (Case T‑36/17) (EU trade mark — Opposition proceedings — Application for EU word mark COLINEB — Earlier national figurative mark Colina — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 — Extent of the examination to be carried out by the Board of Appeal — Article 76(1) of Regulation No 207/2009) 1. EU 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 — Account taken by the General Court of matters of law and fact not previously raised before the departments of EUIPO — Precluded (Council Regulation No 207/2009, Art. 65) (see para. 18) 2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Need to determine that question, once raised by the applicant before the decision on the opposition — Consequence (Council Regulation No 207/2009, Art. 42(2)) (see paras 20, 22, 23) 3. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Non-submission of plea based on insufficient proof of genuine use (Council Regulation No 207/2009, Art. 42(2)) (see para. 21) 4. EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Opposition proceedings — Examination restricted to the submissions of the parties — Well-known facts taken into account (Council Regulation No 207/2009, Art. 76(1)) (see paras 29, 30) 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 — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 47) 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 — Likelihood of confusion with the earlier mark – Word mark COLINEB and figurative mark Colina (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 50, 66, 74, 96, 100-102) 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 between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 51, 55, 60) 8. EU trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria (Council Regulation No 207/2009) (see para. 62) 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 — Similarity of the marks concerned — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 75, 76, 81) Re: ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 October 2016 (Case R 500/2016-5), relating to opposition proceedings between Ipsen Pharma and Forest Pharma. Operative part The Court: 1. Dismisses the action; 2. Orders Forest Pharma BV to bear is its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO); 3. Orders Ipsen Pharma SAS to bear its own costs.