Judgment of the General Court (Third Chamber) of 5 May 2021 –

Grangé and Van Strydonck v EUIPO – Nema (âme)

(Case T‑442/20)

(EU trade mark – Opposition proceedings – Application for EU word mark âme – Earlier international figurative mark AMEN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Counteraction of visual and phonetic similarities through conceptual differences – Conditions for counteraction)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 19, 20, 74)

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 registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Refusal to register where there is a relative ground for refusal, even if limited to part of the Union (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 21)

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 – Likelihood of confusion with the earlier mark – Assessment of the likelihood of confusion – Determination of the relevant public – Attention level of the public (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 23)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 29, 30)

5. EU trade mark – Decisions of the Office – EUIPO’s previous decision-making practice – Principle of legality – Need for a strict and complete examination in each particular case (European Parliament and Council Regulation No 2017/1001) (see paras 41, 42)

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 – Similarity of the marks concerned – Whether conceptual differences may neutralise visual or aural similarities – Conditions (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 66)

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 – Word mark âme and figurative mark AMEN (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 73, 78, 79)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 4 June 2020 (Case R 2960/2019-4), relating to opposition proceedings between Nema, on the one hand, and Ms Grangé and Ms Van Strydonck, on the other.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 June 2020 (Case R 2960/2019-4);