Judgment of the General Court (Ninth Chamber) of 1 March 2018 — Shoe Branding Europe v EUIPO — adidas (Device of two parallel stripes on a shoe)

Case T‑85/16)

(EU trade mark — Opposition proceedings — Application for EU figurative mark consisting of two parallel stripes on a shoe — Earlier EU figurative mark representing three parallel stripes on a shoe — Relative ground for refusal — Damage to reputation — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

1. EU trade mark—Appeals procedure—Action before the EU judicature—Jurisdiction of the General Court—Direction issued to the Office @ Direction addressed to the Office—Not included (Council Regulation No 207/2009, Art. 65(6)) (see para. 20)

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 enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para. 33)

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 enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions—Link between the marks—Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 34-41, 82, 102)

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 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 (Council Regulation No 207/2009, Art. 8(5)) (see paras 43, 44)

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—Aim—Proof to be adduced by proprietor—Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 45-47)

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—Meaning (Council Regulation No 207/2009, Art. 8(5)) (see paras 48, 49)

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—Taking unfair advantage of the distinctive character or repute of the earlier mark—Burden of proof, etc. (Council Regulation No 207/2009, Art. 8(5)) (see para. 50)

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—Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 51-55)

9. 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—Use of the trade mark sought without just grounds—Meaning (Council Regulation No 207/2009, Art. 8(5)) (see paras 56-60)

10. 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—Use of the trade mark sought without just grounds—Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 61-67)

11. 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—Figurative mark consisting of two parallel stripes on a shoe and figurative mark representing three parallel stripes on a shoe (Council Regulation No 207/2009, Art. 8(5)) (see paras 99, 110, 111, 128, 145-147)

Re:

Action brought against the decision of the Second Board of Appeal of EUIPO of 26 November 2015 (Case R 3106/2014-2), relating to opposition proceedings between adidas and Shoe Branding Europe.

Operative part

The Court:

1. Dismisses the action;