Judgment of the General Court (Third Chamber) of 23 September 2014 — Groupe Léa Nature v OHIM — Debonair Trading Internacional (SO’BiO ētic)

(Case T‑341/13)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark SO’BiO ētic — Earlier Community and national word and figurative marks SO…? — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) and (5) of Regulation (EC) No 207/2009 — Lack of genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009’

1. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Need to determine that question, once raised by the applicant, before the decision on the opposition (Council Regulation No 207/2009, Art. 42(2)) (see para. 21)

2. Union law — Principles — Protection of legitimate expectations — Conditions (see para. 24)

3. Community trade mark — Appeals procedure — Boards of Appeal — Classification as administration of the Office — Right of the parties to a fair ‘process’ — None (Council Regulation No 207/2009, Arts 62 to 64) (see para. 25)

4. Community trade mark — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 207/2009, Art. 75) (see para. 26)

5. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Interpretation having regard to the rationale of Article 42(2) and (3) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3)) (see para. 31)

6. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 42, (2) and (3)) (see paras 42-45)

7. Community trade mark — Definition and acquisition of the Community 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 56-59)

8. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 63‑66)

9. Community trade mark — Definition and acquisition of the Community 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 — Determination of dominant component(s) (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 67)

10. Community trade mark — Definition and acquisition of the Community 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 — Elements of a trade mark having a descriptive character (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 68)

11. Community trade mark — Definition and acquisition of the Community 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 mark SO’BiO ētic and word marks SO... ? (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 78, 79, 82-84, 87-90)

12. Community trade mark — Definition and acquisition of the Community 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 — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para. 99)

Re:

ACTION brought against the decision of the First Board of Appeal of OHIM of 26 March 2013 (Case R 203/2011-1), relating to opposition proceedings between Debonair Trading Internacional Lda and Groupe Léa Nature SA.

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 March 2013 (Case R 203/2011-1);

2. Orders OHIM and Debonair Trading Internacional Lda each to bear their own costs, and to pay the costs of Groupe Léa Nature SA.

Judgment of the General Court (Third Chamber) of 23 September 2014 — Groupe Léa Nature v OHIM — Debonair Trading Internacional (SO’BiO ētic)

(Case T‑341/13)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark SO’BiO ētic — Earlier Community and national word and figurative marks SO…? — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) and (5) of Regulation (EC) No 207/2009 — Lack of genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009’

1. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Need to determine that question, once raised by the applicant, before the decision on the opposition (Council Regulation No 207/2009, Art. 42(2)) (see para. 21)

2. Union law — Principles — Protection of legitimate expectations — Conditions (see para. 24)

3. Community trade mark — Appeals procedure — Boards of Appeal — Classification as administration of the Office — Right of the parties to a fair ‘process’ — None (Council Regulation No 207/2009, Arts 62 to 64) (see para. 25)

4. Community trade mark — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 207/2009, Art. 75) (see para. 26)

5. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Interpretation having regard to the rationale of Article 42(2) and (3) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3)) (see para. 31)

6. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 42, (2) and (3)) (see paras 42-45)

7. Community trade mark — Definition and acquisition of the Community 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 56-59)

8. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 63‑66)

9. Community trade mark — Definition and acquisition of the Community 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 — Determination of dominant component(s) (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 67)

10. Community trade mark — Definition and acquisition of the Community 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 — Elements of a trade mark having a descriptive character (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 68)

11. Community trade mark — Definition and acquisition of the Community 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 mark SO’BiO ētic and word marks SO... ? (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 78, 79, 82-84, 87-90)

12. Community trade mark — Definition and acquisition of the Community 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 — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para. 99)

Re:

ACTION brought against the decision of the First Board of Appeal of OHIM of 26 March 2013 (Case R 203/2011-1), relating to opposition proceedings between Debonair Trading Internacional Lda and Groupe Léa Nature SA.

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 March 2013 (Case R 203/2011-1);