Judgment of the General Court (Ninth Chamber) of 28 May 2020 –

Martínez Albainox v EUIPO – Taser International (TASER)

(Case T‑341/19)

(EU trade mark – Invalidity proceedings – EU figurative mark TASER – Earlier EU word marks TASER – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Detriment to reputation – Unfair advantage taken of the distinctive character or the repute of the earlier trade mark – Article 8(5) of Regulation 2017/1001)

1. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an identical or similar earlier 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, Arts 8(1)(b) and 60(1)(a)) (see paras 20, 21)

2. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an identical or similar earlier 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, Arts 8(1)(b) and 60(1)(a)) (see paras 22-24)

3. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an identical or similar earlier mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Earlier trade mark constituted by an EU trade mark – Refusal to register where there is a relative ground for refusal, even if limited to part of the Union (European Parliament and Council Regulation 2017/1001, Arts 8(1)(b) and 60(1)(a)) (see para. 28)

4. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see para. 37)

5. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Condition – Link between the marks – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see paras 38-43, 55, 63)

6. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Taking unfair advantage of the distinctive character or repute of the earlier mark – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Arts 8(5) and 60(1)(a)) (see paras 44, 45)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 20 March 2019 (Case R 1577/2018-4), relating to invalidity proceedings between Taser International and Martínez Albainox.

Operative part of the judgment

The Court:

1. Dismisses the action;