Judgment of the General Court (Fourth Chamber) of 19 December 2019 –

Amigüitos pets & life v EUIPO — Société des produits Nestlé (THE ONLY ONE by alphaspirit wild and perfect)

(Case T‑40/19)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark THE ONLY ONE by alphaspirit wild and perfect — Earlier EU word mark ONE — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Article 8(5) of Regulation 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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 21, 22, 83, 84)

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 — Assessment of the likelihood of confusion — Determination of the relevant public — Attention level of the public (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 24)

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 THE ONLY ONE by alphaspirit wild and perfect — Word mark ONE (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 31, 33, 34, 52, 62, 69, 81, 82, 91, 94, 95, 109-111)

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 — Determination of the dominant element or elements (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 35, 45, 51, 58, 61)

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 — Similarity of the marks concerned — Assessment only on the basis of the dominant element of a complex mark — Conditions (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 36)

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 — Likelihood of confusion with the earlier mark — Weighing elements of similarity or difference between the signs — Objective marketing considerations to be taken into account (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 92, 93)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b) and (5)) (see paras 96, 97, 108)

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 — 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 — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see paras 114, 115)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 19 November 2018 (Case R 272/2018-4) relating to opposition proceedings between Société des produits Nestlé SA and Amigüitos pets & life.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 November 2018 (Case R 272/2018-4);

2. Dismisses the action as to the remainder;

3. Orders EUIPO to pay, in addition to its own costs, half of the costs incurred by Amigüitos pets & life, SA, including those incurred for the purposes of the proceedings before the Board of Appeal;