Judgment of the General Court (Seventh Chamber) of 11 April 2019 —

Inditex v EUIPO — Ansell (ZARA TANZANIA ADVENTURES)

(Case T‑655/17)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark ZARA TANZANIA ADVENTURES — Earlier EU word marks ZARA — Relative ground for refusal — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) — Unfair advantage taken of the distinctive character or the repute of the earlier trade marks — Detriment to the distinctive character or the repute of the earlier trade marks)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 17, 18)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark ZARA TANZANIA ADVENTURES — Word marks ZARA (Council Regulation No 207/2009, Art. 8(5)) (see paras 19, 32, 39, 40, 54-60)

3. EU trade mark — Procedural provisions — Examination of the facts of EUIPO’s own motion — Opposition proceedings — Examination restricted to the submissions of the parties — Obligation on the parties to state facts and evidence in support (Council Regulation No 207/2009, Art. 76(1)) (see para. 37)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Aim — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see para. 41)

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 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 EU — Meaning — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see para. 48)

7. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (Council Regulation No 207/2009, Art. 65(3)) (see para. 61)

Re:

Action brought against the decision of the Second Board of Appeal of EUIPO of 5 July 2017 (Joined Cases R 2330/2011-2 and R 2369/2011-2), relating to opposition proceedings between Industria de Diseño Textil, on the one hand, and Mrs Ansell and Mr Ansell, on the other hand.

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 July 2017 (Joined Cases R 2330/2011-2 and R 2369/2011-2) in so far as the Board of Appeal partially upheld the appeal brought by Mrs Ansell and Mr Ansell (Case R 2369/2011-2) and allowed the mark applied for to proceed to registration in respect of the services which are listed in point 3 of the operative part of that decision and are in Classes 39 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended;

2. Dismisses the action as to the remainder;