Judgment of the General Court (Ninth Chamber) of 3 April 2014 — Debonair Trading Internacional v OHIM — Ibercosmetica (SÔ :UNIC)

(Case T‑356/12)

‛Community trade mark — Opposition proceedings — Application for the Community word mark SÔ :UNIC — Earlier Community and national word marks SO… ?, SO… ? ONE, SO… ? CHIC and non-registered word marks — Relative grounds for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Likelihood of confusion — Family of marks — Article 8(4) of Regulation No 207/2009 — Rule 15(2)(b)(iii) of Regulation (EC) No 2868/95 — Admissibility of the opposition’

1. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 18)

2. Community trade mark — Definition and acquisition of the Community 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 having characteristics allowing them to be regarded as forming part of the same ‘series’ or ‘family’ — Conditions (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 19, 20)

3. Community trade mark — Definition and acquisition of the Community 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 — Word mark SÔ :UNIC — Word marks SO… ?, SO… ? ONE and SO… ? CHIC (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 23, 25, 28, 29, 32)

4. Community trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (Council Regulation No 207/2009, Art. 65(1) and (3)) (see para. 52)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 4 June 2012 (Case R 1033/2011-4), relating to opposition proceedings between Debonair Trading Internacional Lda and Ibercosmetica, SA de CV.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 June 2012 (Case R 1033/2011-4) in so far as the Board of Appeal rejected as inadmissible the opposition based on Article 8(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark with regard to the signs relied on by Debonair Trading Internacional Lda so far as the United Kingdom and Ireland are concerned;

2. Dismisses the action as to the remainder;

3. Orders each party to bear its own costs.

Judgment of the General Court (Ninth Chamber) of 3 April 2014 — Debonair Trading Internacional v OHIM — Ibercosmetica (SÔ :UNIC)

(Case T‑356/12)

‛Community trade mark — Opposition proceedings — Application for the Community word mark SÔ :UNIC — Earlier Community and national word marks SO… ?, SO… ? ONE, SO… ? CHIC and non-registered word marks — Relative grounds for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Likelihood of confusion — Family of marks — Article 8(4) of Regulation No 207/2009 — Rule 15(2)(b)(iii) of Regulation (EC) No 2868/95 — Admissibility of the opposition’

1. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 18)

2. Community trade mark — Definition and acquisition of the Community 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 having characteristics allowing them to be regarded as forming part of the same ‘series’ or ‘family’ — Conditions (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 19, 20)

3. Community trade mark — Definition and acquisition of the Community 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 — Word mark SÔ :UNIC — Word marks SO… ?, SO… ? ONE and SO… ? CHIC (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 23, 25, 28, 29, 32)

4. Community trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (Council Regulation No 207/2009, Art. 65(1) and (3)) (see para. 52)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 4 June 2012 (Case R 1033/2011-4), relating to opposition proceedings between Debonair Trading Internacional Lda and Ibercosmetica, SA de CV.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 June 2012 (Case R 1033/2011-4) in so far as the Board of Appeal rejected as inadmissible the opposition based on Article 8(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark with regard to the signs relied on by Debonair Trading Internacional Lda so far as the United Kingdom and Ireland are concerned;

2. Dismisses the action as to the remainder;