Judgment of the General Court (Ninth Chamber) of 15 October 2020 –

Rothenberger v EUIPO – Paper Point (ROBOX)

(Case T‑49/20)

(EU trade mark – Opposition proceedings – Application for the EU word mark ROBOX – Earlier EU word mark OROBOX – Relative ground for refusal – Likelihood of confusion – Independent subcategory of goods – Taking into consideration of a descriptive element – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

1. Acts of the institutions – Temporal application – Procedural rules – Substantive rules – Distinction (see para. 17)

2. Judicial proceedings – Application initiating proceedings – Formal requirements – Clear and precise statement of the pleas relied on – Flexible interpretation (see para. 19)

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 – Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 23, 24, 92, 96)

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 between the goods or services in question – Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 29, 40)

5. EU trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Partial use – Effect – Concept of ‘part of the goods or services’ covered by the registration (Council Regulation No 207/2009, Art. 42(2) (see paras 32-35)

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 – Similarity of the marks concerned – Criteria for assessment – Composite mark – Assessment of the distinctive character of an element of which a trade mark is composed (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 57-60)

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 – Similarity of the marks concerned – Criteria for assessment – Composite mark – Distinctive and descriptive character of an element common to both marks – Relevance (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 66-68, 72)

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 – Assessment of the likelihood of confusion – Determination of the relevant public – Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 99)

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 – Word marks ROBOX and OROBOX (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 101, 102)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 31 October 2019 (Case R 210/2019-1), relating to opposition proceedings between Paper Point and Rothenberger.

Operative part

The Court:

1. Dismisses the action;