Judgment of the General Court (Fourth Chamber) of 26 June 2018 –

Sicignano v EUIPO — IN.PRO.DI (GiCapri “a giacchett’e capri”)

(Case T‑619/16)

(EU trade mark — Opposition proceedings — Application for EU figurative mark GiCapri ‘a giacchett’e capri’ — Earlier EU figurative mark CAPRI — 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))

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—Not included (Council Regulation No 207/2009, Arts 65(2) and 76(2)) (see para. 22)

2. EU trade mark—Procedural provisions—Examination of the facts of the Office’s own motion—Scope—Obligation to prove matters within common knowledge—None—Dispute before the General Court—Submission of documents to demonstrate the accuracy of a well-known fact (Council Regulation No 207/2009, Art. 76(1)) (see para. 28)

3. EU trade mark—Appeals procedure—Action before the EU judicature—Legality of the decision of a Board of Appeal adjudicating in opposition proceedings—Challenged by the adducing of new facts—Not permissible—Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the EUIPO bodies—Lawfulness (Council Regulation No 207/2009, Art. 65) (see para. 31)

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—Likelihood of confusion with the earlier mark—Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 35, 74)

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—Criteria for assessment—Degree of distinctiveness of the earlier trade mark—Not included (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 46)

6. 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 para. 53)

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—Figurative marks GiCapri (a giacchett’e capri) and CAPRI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 67, 68, 91-93)

8. 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. 76)

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—Coexistence of two marks on a given market—Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 87, 88)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 2 June 2016 (Case R 806/2015-5), relating to opposition proceedings between IN.PRO.DI and Mr Sicignano.

Operative part

The Court:

1. Dismisses the action;