Judgment of the General Court (Second Chamber) of 15 December 2021 –

Rotondaro v EUIPO – Pollini (COLLINI)

(Case T‑69/21)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark COLLINI – Earlier EU and national word marks POLLINI and STUDIO POLLINI – 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 19-23)

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 – Assessment of the likelihood of confusion – Determination of the relevant public – Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 27, 40)

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 – Figurative mark COLLINI – Word marks POLLINI and STUDIO POLLINI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 39, 50, 51, 59, 61, 64-66)

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 – Similarity of the marks concerned – Criteria for assessment – Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 43, 46, 47, 55)

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 – Assessment of the distinctive character of an element of which a trade mark is composed (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 45)

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 – Similarity of the marks concerned – Whether conceptual differences may neutralise visual or aural similarities – Conditions (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 63)

7. EU 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. 67)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 3 December 2020 (Case R 2518/2019-1), relating to opposition proceedings between Pollini and Mr Rotondaro.

Operative part

The Court:

1. Dismisses the action;