Judgment of the General Court (Sixth Chamber) of 21 December 2021 –

Fashion Energy v EUIPO – Retail Royalty (1st AMERICAN)

(Case T‑699/20)

(EU trade mark – Opposition proceedings – Application for EU figurative mark 1st AMERICAN – Earlier EU figurative mark representing an eagle or other bird of prey – Relative ground for refusal – Likelihood of confusion – Phonetic similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Article 72(6) of Regulation 2017/1001 – Article 94(1) of Regulation 2017/1001)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Alteration of a decision of the Office – Assessment in the light of the powers conferred on the Board of Appeal (European Parliament and Council Regulation 2017/1001, Art. 72(3)) (see para. 24)

2. EU trade mark – Procedural provisions – Statement of reasons for decisions – Aim (European Parliament and Council Regulation 2017/1001, Art. 94(1)) (see para. 35)

3. Action for annulment – Pleas in law – Lack of or inadequate statement of reasons – Separate plea in law from the one concerning substantive legality (Arts 263 and 296 TFEU) (see para. 36)

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 45, 46, 104)

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 – Criteria for assessment – Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 52, 53, 58)

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 – Figurative mark 1st AMERICAN and figurative mark representing an eagle or other bird of prey (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 59, 60, 63, 83, 102, 103, 119, 120)

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 – Figurative marks – Phonetic comparison (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 69-71, 80)

8. EU trade mark – Appeals procedure – Action before the EU judicature – Legality of the decision of a Board of Appeal adjudicating in opposition proceedings – Challenged by the adducing of new facts – Not permissible – Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the OHIM bodies – Whether permissible (European Parliament and Council Regulation 2017/1001, Art. 72) (see para. 96)

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 – 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 (Regulation No 207/2009, Art. 8(1)(b)) (see paras 110, 113)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 10 September 2020 (Case R 426/2020-4), relating to opposition proceedings between Retail Royalty and Fashion Energy.

Operative part

The Court:

1. Dismisses the action;