Judgment of the General Court (Ninth Chamber) of 26 January 2022 –

Diego v EUIPO – Forbo Financial Services (WOOD STEP LAMINATE FLOORING)

(Case T‑498/20)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark WOOD STEP LAMINATE FLOORING – Earlier international word mark STEP – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Free movement of goods)

1. Judicial proceedings – Application initiating proceedings – Formal requirements – Summary of the pleas in law relied on – Abstract statement – Inadmissibility (Statute of the Court of Justice, Arts 21, first para., and 53, first para.; Rules of Procedure of the General Court, Art. 177(1)(d)) (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 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 28-30, 60, 61, 69, 93)

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. 32)

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 – Likelihood of confusion with the earlier mark – Figurative mark WOOD STEP LAMINATE FLOORING and word mark STEP (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 36, 37, 76, 98-102)

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 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 40, 41, 46, 73, 85)

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 – Assessment of the distinctive character of an element of which a trade mark is composed (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 43, 54)

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 – Elements of a trade mark having a descriptive character (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 44, 45)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 4 June 2020 (Case R 1630/2019-1), relating to opposition proceedings between Forbo Financial Services and Diego Kereskedelmi és Szolgáltató.

Operative part

The Court:

1. Dismisses the action;