Judgment of the General Court (Eighth Chamber) of 16 September 2013 — Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON)

(Case T‑200/10)

‛Community trade mark — Opposition proceedings — Application for Community word mark AVERY DENNISON — Earlier national word mark DENNISON — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009 — Subject-matter of the dispute before the Board of Appeal’

1. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 42(2) and (3)) (see paras 20-26, 78)

2. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Determination of a quantitative threshold of minimum use (Council Regulation No 207/2009, Art. 42(2) and (3)) (see para. 27)

3. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment — Requirement of solid and objective evidence (Council Regulation No 207/2009, Art. 42(2) and (3)) (see para. 28)

4. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use of the mark in a form differing by elements not altering the distinctive character of the mark (Council Regulation No 207/2009, Arts 15(1), second para., (a), and 42(2) and (3)) (see paras 29, 38)

5. 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 — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 100, 146)

6. 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 — Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 103)

7. 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 — Similarity between the goods or services in question — Complementary nature of the goods (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 106)

8. 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 — Similarity of the marks concerned — Criteria for assessment — Trade mark constituted by the juxtaposition of an element and another mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 130, 131)

9. 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 marks AVERY DENNISON and DENNISON (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 149-153)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 9 February 2010 (Case R 798/2009‑2), relating to opposition proceedings between Dennison-Hesperia, SA and Avery Dennison Corp.

Operative part

The Court:

1. Dismisses the action;