Judgment of the General Court (Ninth Chamber) of 28 February 2019 — Lotte v EUIPO — Générale Biscuit-Glico France (PEPERO original)

(Case T‑459/18)

(EU trade mark — Invalidity proceedings — EU figurative mark PEPERO original — Earlier national three-dimensional trade mark — Shape of an oblong biscuit partially covered with chocolate — Declaration of invalidity — Article 8(5) of Regulation (EU) 2017/1001 — Genuine use of the earlier mark — Earlier mark consisting of the shape of the product — Use as a trade mark — No alteration of the distinctive character)

1. EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Invalidity proceedings concerning relative grounds for refusal — Examination restricted to the submissions of the parties — Examination of a legal question of the Office’s own motion — Condition (European Parliament and Council Regulation 2017/1001, Art. 95(1)) (see para. 31)

2. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see paras 32, 106, 174, 182)

3. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Concept/Meaning/Definition — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 64(2) and (3)) (see paras 51-53, 72, 76)

4. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Subject matter and scope of Article 18(1)(a) of Regulation 2017/1001 (European Parliament and Council Regulation 2017/1001, Art. 18(1)(a)) (see paras 90, 97)

5. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence 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 European Union — Concept/Meaning/Definition — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see para. 114)

6. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence 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 European Union — Use of a mark in conjunction with another registered well-known mark (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see paras 130, 131)

7. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence 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 (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see para. 139)

8. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Similarity of the marks concerned — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see paras 140, 144-146, 154)

9. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier identical or similar mark enjoying a reputation — Figurative mark PEPERO original and three-dimensional trade mark consisting of the shape of an oblong biscuit partially covered with chocolate (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see paras 156, 167, 177, 178, 188)

Re

Action brought against the decision of the First Board of Appeal of EUIPO of 11 May 2018 (Case R 913/2017-1) relating to invalidity proceedings between Générale Biscuit-Glico France and Lotte.

Operative part

The Court:

1. Dismisses the action;