Judgment of the General Court (First Chamber) of 20 November 2017 – Cotécnica v EUIPO – Visán Industrias Zootécnicas (cotecnica OPTIMA)

(Case T-465/16)

(EU trade mark — Opposition proceedings — Application for EU figurative mark cotecnica OPTIMA — Earlier EU figurative mark visán Optima PREMIUM PETFOOD — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

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 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 23, 24, 85, 86, 90)

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–Similarity of the marks concerned–Criteria for assessment–Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 29-31, 56, 71)

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–Similarity of the marks concerned–Assessment of the distinctiveness of an element composing a trade mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 45, 51)

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 cotecnica OPTIMA and figurative mark visán Optima PREMIUM PETFOOD (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 60, 82, 91, 92, 107)

5. EU trade mark–Decisions of the Office–Principle of equal treatment–Principle of sound administration–EUIPO’s previous decision-making practice–Principle of legality–Need for a strict and complete examination in each particular case (Council Regulation No 207/2009) (see paras 63, 66)

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–Likelihood of confusion with the earlier mark–Weak distinctive character of the earlier mark–Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 87)

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–Likelihood of confusion with the earlier mark–Criteria for assessment–Coexistence of two marks on a given market–Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 97-101)

Re:

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 13 June 2016 (Case R 229/2016-2), relating to opposition proceedings between Visán Industrias Zootécnicas and Cotécnica.

Operative part

The Court:

1. Dismisses the action;

2. Orders Cotécnica, SCCL to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);