Judgment of the General Court (Second Chamber) of 2 December 2020 –

Monster Energy v EUIPO – Nanjing aisiyou Clothing (Representation of a scratch)

(Case T‑35/20)

(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing a claw-like scratch – Earlier EU and UK figurative marks representing claw-like scratches – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b), (4) 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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 24, 25, 54)

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. 27)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 32)

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 – Figurative marks without verbal elements – Phonetic comparison (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 45)

5. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Review of the lawfulness of decisions of the Boards of Appeal – Review of the legal classification given to the facts of the dispute (European Parliament and Council Regulation 2017/1001, Art. 72(2)) (see para. 48)

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 – Figurative mark representing a claw-like scratch – Figurative marks representing claw-like scratches (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 56-62)

7. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade – Conditions – Interpretation in the light of EU law – Assessment by reference to the criteria determined by the national law governing the sign relied on (European Parliament and Council Regulation 2017/1001, Arts 8(4) and 95(1)) (see paras 67-69)

8. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade – Conditions – Assessment by reference to the criteria determined by the national law governing the sign relied on – Verification of the content of national law – Scope (European Parliament and Council Regulation 2017/1001, Arts 8(4) and 95(1); Commission Regulation 2018/625, Arts 7(2)(d)) (see paras 82, 83)

9. EU trade mark – Appeals procedure – Action before the EU judicature – Power of the General Court to alter the contested decision – Limits (European Parliament and Council Regulation 2017/1001, Art. 72(3)) (see paras 90, 91)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 13 November 2019 (Case R 1104/2019-5), relating to opposition proceedings between Monster Energy Company and Nanjing aisiyou Clothing.

Operative part

The Court:

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 November 2019 (Case R 1104/2019-5), in so far as it concerns the rejection of the opposition based on Article 8(1)(b) and (5) of Regulation (EU) 2017/1001;

2. Dismisses the action as to the remainder;