Judgment of the General Court (Seventh Chamber) of 27 September 2018 –

TenneT Holding v EUIPO — Ngrid Intellectual Property (NorthSeaGrid)

(Case T‑70/17)

(EU trade mark — Opposition proceedings — Application for EU figurative mark NorthSeaGrid — Earlier EU word and figurative marks nationalgrid — Relative ground for refusal — No likelihood of confusion — 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—Refusal to register on a ground relating to refusal even limited to part of the Union (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 44)

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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 45)

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. 50)

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—Figurative mark NorthSeaGrid and figurative and word marks nationalgrid (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 59, 143, 144, 150, 151)

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—Criteria for assessment—Composite mark—Determination of the dominant elements(s) (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 60, 61, 66)

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—Assessment of the distinctiveness of an element composing a trade mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 67-69)

7. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service—Assessment of the descriptive nature of a sign—Geographical names (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 82-86)

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 registered for identical or similar goods or services—Similarity of the marks concerned—Possibility of a visual similarity between a figurative mark and a word mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 122)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 21 November 2016 (Case R 1607/2015-5) relating to opposition proceedings between Ngrid Intellectual Property and TenneT Holding.

Operative part

The Court:

1. Annuls paragraph 1 of the operative part of the decision of the Fifth Board of Appeal of EUIPO of 21 November 2016 (Case R 1607/2015-5) relating to opposition proceedings between Ngrid Intellectual Property Ltd and TenneT Holding BV;

2. Orders EUIPO to pay, in addition to its own costs, those incurred by TenneT Holding BV;