Judgment of the General Court (Eighth Chamber) of 15 September 2016 —

Arrom Conseil v EUIPO — Nina Ricci (Roméo has a Gun by Romano Ricci)

(Case T‑359/15)

‛EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark Roméo has a Gun by Romano Ricci — Earlier EU word marks NINA RICCI and RICCI — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or reputation of the earlier marks — Damage to reputation — Article 8(5) of Regulation No 207/2009’

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 35, 50)

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 Roméo has a Gun by Romano Ricci and word marks NINA RICCI and RICCI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 36, 37, 53, 54, 67-69, 77, 81)

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 of the marks concerned — Criteria for assessment — Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 39, 40)

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 — Coexistence of earlier marks on the market — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 56)

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 — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 59-62, 73)

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 — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark — Relevant public (Council Regulation No 207/2009, Art. 8(5)) (see para. 63)

7. EU trade mark — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 207/2009, Art. 75, second sentence) (see para. 79)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 13 April 2015 (Case R 1021/2014-1) relating to opposition proceedings between Nina Ricci SARL and Arrom Conseil.

Operative part

The Court:

1. Dismisses the action;