Judgment of the General Court (Fifth Chamber) of 20 June 2019 — Nonnemacher v EUIPO — Ingram (WKU WORLD KICKBOXING AND KARATE UNION)

(Case T‑390/18)

(EU trade mark — Invalidity proceedings — EU figurative mark WKU WORLD KICKBOXING AND KARATE UNION — Earlier EU word marks WKA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001 — No limitation in consequence of acquiescence — Article 61(1) of Regulation 2017/1001)

1. EU trade mark — Surrender, revocation and invalidity — Limitation through acquiescence (European Parliament and Council Regulation 2017/1001, Art. 61(1)) (see para. 18)

2. EU law — Principles — Prohibition of abuse of right (see para. 21)

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 — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Arts 8(1)(b) and 60(1)(a)) (see paras 29, 30, 88, 102, 106)

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 between the goods or services in question — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 31)

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 — 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 paras 35, 40)

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 48, 49, 51, 52)

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 — Similarity of the marks concerned — Assessment of the distinctiveness of an element of which a trade mark is composed (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 50)

8. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Request presented expressly and on time by the applicant — Possibility of submitting the application for the first time before the Board of Appeal — Precluded (European Parliament and Council Regulation 2017/1001, Art. 64(2)) (see para. 95)

9. 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 — Figurative mark WKU WORLD KICKBOXING AND KARATE UNION — Word marks WKA (European Parliament and Council Regulation 2017/1001, Arts 8(1)(b) and 60(1)(a)) (see paras 107-110)

Re

Action brought against the decision of the First Board of Appeal of EUIPO of 17 April 2018 (Case R 409/2017-1), relating to invalidity proceedings between Mr Ingram and Mr Nonnemacher.

Operative part

The Court:

1. Dismisses the action;