Judgment — ECLI:EU:T:2017:870
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‑123/16) (EU trade mark — Opposition proceedings — International registration designating the European Union — Word 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 (European Parliament and Council Directive 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 — Word 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 — Word 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 2501/2013-4), 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.