Judgment of the General Court (Ninth Chamber) of 25 November 2020 –

Kisscolor Living v EUIPO – Teoxane (KISS COLOR)

(Case T‑802/19)

(EU trade mark – Opposition proceedings – Application for EU figurative mark KISS COLOR – Earlier EU word mark KISS – 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) – Temporal application of the law)

1. Acts of the institutions – Temporal application – Procedural rules – Substantive rules – Distinction (see para. 15)

2. Acts of the institutions – Temporal application – Application of the substantive law in force at the time of the application for the registration of a trade mark (see para. 15)

3. Judicial proceedings – Application initiating proceedings – Formal requirements – Clear and precise statement of the pleas relied on – Flexible interpretation (see para. 17)

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 – Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 23, 24, 97, 99, 100)

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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 26, 98)

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 between the goods or services in question – Criteria for assessment – Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 31, 32, 38)

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 – Figurative mark KISS COLOR and word mark KISS (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 48, 59-62, 68-70, 92, 103-109)

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 – Similarity of the marks concerned – Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 49, 54, 74, 78, 83, 88)

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 – 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. 55)

10. 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 – Elements of a trade mark having a descriptive character (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 56)

11. 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 57, 66)

12. 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. 106)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 16 September 2019 (Case R 2167/2018-4), relating to opposition proceedings between Teoxane and Kisscolor Living.

Operative part

The Court:

1. Dismisses the action;