Judgment of the General Court (First Chamber) of 13 July 2012 — Caixa Geral de Depósitos v OHIM — Caixa d’Estalvis i Pensions de Barcelona (‘la Caixa’)

(Case T-255/09)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark la caixa — Earlier Portuguese word mark CAIXA — Earlier national word and figurative marks — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)’

1. 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 — Assessment of the likelihood of confusion — Attention level of the public (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 19)

2. 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 ‘la Caixa’ and word mark CAIXA (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 21, 37, 53, 59, 62, 69, 79, 80, 82-84)

3. 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 between the goods or services in question — Criteria for assessment — Similarity of the marks concerned — Criteria for assessment — Complex mark (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 22)

4. 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 — Complex mark (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 26, 27)

5. Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 73, first sentence, of Regulation No 40/94 — Scope identical with that of Article 253 EC (Council Regulation No 40/94, Art. 73) (see para. 39)

6. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — General Court taking account of legal and factual elements not previously submitted before the OHIM bodies — Exclusion (Rules of Procedure of the General Court, Art. 135(4); Council Regulation No 40/94, Art. 63) (see para. 51)

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 — Assessment of the likelihood of confusion — Criteria (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 70-74, 78)

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 — Likelihood of confusion with the earlier mark — Likelihood of association — Earlier marks showing characteristics allowing them to be regarded as forming part of the same ‘series’ or ‘family’ — Conditions (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 81)

9. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Scope — Relative grounds for refusal, excluding absolute grounds raised in the observations of third parties (Council Regulation No 40/94, Arts 7, 8, 41, 42 and 43) (see paras 86, 87)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 24 March 2009 (Case R 556/2008-2), relating to opposition proceedings between Caixa d’Estalvis i Pensions de Barcelona and Caixa Geral de Depósitos, SA.

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 24 March 2009 (Case R 556/2008-2) as regards the goods covered by the mark applied for in Class 16;

2. Dismisses the action as to the remainder;

3. Orders Caixa Geral de Depósitos, SA to bear two thirds of its own costs and to pay two thirds of the costs incurred by OHIM and two thirds of the costs incurred by Caixa d’Estalvis i Pensions de Barcelona.