Information;Judgment — ECLI:EU:T:2022:561
Date: 2022-09-14
Language of the case: Italian
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Italy

Judgment of the General Court (Ninth Chamber) of 14 September 2022 – Itinerant Show Room v EUIPO – Save the Duck (ITINERANT) (Case T‑417/21) (1) (EU trade mark – Opposition proceedings – Application for EU figurative mark ITINERANT – Earlier EU figurative mark representing a singing duck in a circle – Relative ground for refusal – Article 8(5) of Regulation (EU) 2017/1001 – Similarity – Repute – Link – Unfair advantage – No due cause – Article 95(2) of Regulation 2017/1001 – Article 27(4) of Delegated Regulation (EU) 2018/625 – Document produced for the first time before the Board of Appeal – Inadmissibility) 1. EU trade mark – Procedural provisions – Examination of the facts of EUIPO’s own motion – Facts and evidence not submitted in time – Account taken – Power of assessment of EUIPO (European Parliament and Council Regulation 2017/1001, Art. 95(2); Commission Regulation 2018/625, Art. 27(4)) (see paragraphs 18-21) 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 – Taking unfair advantage of the distinctive character or repute of the earlier mark – Detriment to the distinctive character or repute of the earlier mark – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see paragraphs 36, 37, 102, 103, 105) 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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Similarity of the marks concerned – Criteria for assessment – Composite mark (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see paragraphs 41, 45, 46, 53) 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 – Figurative mark ITINERANT and figurative mark representing a singing duck in a circle (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see paragraphs 51, 68, 84, 87, 99, 115) 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 – Reputation of the mark in the Member State or the EU – Use of a trade mark as part of another registered trade mark with a reputation (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see paragraphs 71, 72, 83) 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 – Conditions – Link between the marks – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see paragraphs 90-92) 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 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 detriment (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see paragraph 104) Operative part The Court: 1. Dismisses the action; 2. Orders Itinerant Show Room Srl to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Save the Duck SpA. 1 OJ C 357, 6.9.2021.