Judgment of the General Court (Second Chamber) of 28 April 2021 –

Klaus Berthold v EUIPO – Thomann (HB Harley Benton)

(Case T‑284/20)

(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark HB Harley Benton – Earlier EU word mark HB – Earlier national trade name – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) and (4) of Regulation (EU) 2017/1001)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Re-evaluation of the facts in the light of evidence produced for the first time before it – Precluded (European Parliament and Council Regulation 2017/1001, Art. 72) (see para. 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 – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 33, 34, 83, 118, 119)

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. 52)

4. EU trade mark – Lodging of application for EU trade mark – Identification of the goods or services concerned by the trade mark – Requirements of clarity and precision – Determination, by the competent authorities and the economic operators, of the extent of the protection conferred by the trade mark (European Parliament and Council Regulation 2017/1001, Art. 33(2)) (see para. 61)

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 between the goods or services in question – Criteria for assessment – Complementary nature of the goods or services (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 73, 74, 78)

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 – Criteria for assessment – Composite mark (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 89, 99, 103, 106, 107)

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 – Weighing elements of similarity or difference between the signs – Taking into account of the intrinsic characteristics of the signs or the conditions in which the goods or services are marketed – Clothing sector (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 120)

8. 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 HB Harley Benton and word mark HB (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 121-123, 128)

9. 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 – Likelihood of association – Earlier marks exhibiting characteristics enabling them to be regarded as forming part of the same series or family – Conditions (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 125)

10. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade – Conditions – Interpretation in the light of EU law – Assessment by reference to the criteria determined by the national law governing the sign relied on (European Parliament and Council Regulation 2017/1001, Art. 8(4)) (see paras 134, 135)

11. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade – Conditions – Assessment by reference to the criteria determined by the national law governing the sign relied on – Verification of the content of national law – Scope (European Parliament and Council Regulation 2017/1001, Art. 8(4); Commission Regulation 2018/625, Art. 7(2)(d)) (see paras 139-142)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 11 March 2020 (Case R 1359/2019-4), relating to opposition proceedings between Thomann GmbH and Klaus Berthold Besitzgesellschaft GmbH & Co. KG.

Operative part

The Court:

1. Dismisses the action;