Judgment of the General Court (First Chamber) of 8 November 2017 – Oakley v EUIPO – Xuebo Ye (Representation of a discontinuous ellipse)

(Case T-754/16)

(European Union trade mark — Opposition proceedings — Application for registration of an EU figurative mark representing a silhouette in the shape of a discontinuous ellipse — Prior EU figurative mark representing an ellipse — Relative grounds for refusal — Article 8(1)(b) and (5) of Regulation (EC No 207/2009 (now Article 8(1)(b) and (5) of Regulation (EU) 2017/1001))

1. 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 20-22, 53, 72, 73)

2. 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 30, 31, 47)

3. 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 representing a silhouette in the shape of a discontinuous ellipse–Figurative mark representing an ellipse (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 65, 68, 74, 78-81)

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 of the marks concerned–Criteria for assessment–Degree of distinctiveness of the earlier trade mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 75-77)

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 enjoying a reputation–Protection of well-known earlier mark extended to dissimilar goods or services–Protection also granted where a sign used for identical or similar goods or services (Council Regulation No 207/2009, Art. 8(5)) (see para. 84)

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 enjoying a reputation–Protection of well-known earlier mark extended to dissimilar goods or services–Conditions (Council Regulation No 207/2009, Art. 8(5)) (see paras 87, 88)

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 enjoying a reputation–Protection of well-known earlier mark extended to dissimilar goods or services–Conditions–Reputation of the mark in the Member State or the EU–Meaning–Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 100-103)

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 enjoying a reputation–Protection of well-known earlier mark extended to dissimilar goods or services–Figurative mark representing a silhouette in the shape of a discontinuous ellipse–Figurative mark representing an ellipse (Council Regulation No 207/2009, Art. 8(5)) (see para. 112)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 31 August 2016 (Case R 2608/2015-4) concerning opposition proceedings between Oakley and Xuebo Ye.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 August 2016 (Case R 2608/2015-4) insofar as it confirmed the decision of the Opposition Division and rejected the opposition inasmuch as it is based on the ground set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark);

2. Dismisses the remainder of the action;