Judgment of the General Court (Ninth Chamber) of 21 July 2016 —

Ogrodnik v EUIPO — Aviário Tropical (Tropical)

(Case T‑804/14)

‛EU trade mark — Invalidity proceedings — EU figurative mark Tropical — Earlier national word mark TROPICAL — Relative ground for refusal — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 — Extent of the applicant’s rights under national law — Coexistence of the marks — Obligation to state reasons — Article 75 of Regulation 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 22, 23, 118, 119)

2. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark Tropical and word mark TROPICAL (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 25-27, 73, 117, 124, 125, 136, 175)

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 between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 28, 60, 61)

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 74-78)

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 — Possibility of a similarity between a figurative mark and a word mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 97)

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 — Criteria for assessment — Coexistence of two marks on a given market — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 120, 138-140)

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 — Likelihood of confusion with the earlier mark — Weak distinctive character of the earlier mark — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 129)

8. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Scope — Challenge to the validity of the earlier national mark relied on in opposition — Exclusion — Possibility of recourse to national annulment procedures (Council Regulation No 207/2009, Art. 8) (see para. 134)

9. EU trade mark — Appeals procedure — Action before the EU judicature — Modification of the terms of the dispute as brought before the Board of Appeal — Not permissible (Council Regulation No 207/2009, Art. 65(2)) (see para. 149)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 September 2014 (Case R 1948/2013-4) relating to invalidity proceedings between Aviário Tropical and Mr Ogrodnik.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 September 2014 (Case R 1948/2013-4);