Judgment of the General Court (Second Chamber) of 14 November 2017 – Claranet Europe v EUIPO – Claro (claranet)

(Case T-129/16)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark claranet — Earlier Benelux word mark CLARO — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) 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 18, 20, 88)

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–Likelihood of confusion with the earlier mark–Figurative mark claranet and word mark CLARO (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 21, 22, 89, 90)

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–Similarity between the goods or services in question–Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para 23)

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–Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 26-28, 35)

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–Similarity of the marks concerned–Assessment of the distinctiveness of an element composing a trade mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para 29)

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 of the marks concerned–Elements of a trade mark having a descriptive character (Council Regulation No 207/2009, Art. 8(1)(b)) (see para 36)

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–Weak distinctive character of the earlier mark–Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para 47)

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–Identical number of letters composing two word marks–Presence of several letters in the same order (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 54)

9. EU trade mark–Decisions of the Office–Principle of equal treatment–Principle of sound administration–EUIPO’s previous decision-making practice–Principle of legality–Need for a strict and complete examination in each particular case (Council Regulation No 207/2009) (see paras 94-96)

10. EU trade mark–Procedural provisions–Statement of reasons for decisions–First sentence of Article 75 of Regulation No 207/2009–Scope identical to that of Article 296 TFEU (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see para. 101)

11. EU trade mark–Procedural provisions–Statement of reasons for decisions–Scope (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see para. 102)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 January 2016 (Case R 803/2015-4), relating to opposition proceedings between Claro and Claranet Europe.

Operative part

The Court:

1. Dismisses the action;