Judgment of the General Court (Single Judge) of 15 October 2019 –

Boxer Barcelona v EUIPO — X-Technology Swiss (XBOXER BARCELONA)

(Case T‑582/18)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark XBOXER BARCELONA — Earlier EU figurative mark representing the letter ‘x’ — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Genuine use of the earlier mark — Evidence — Article 18(1)(a) of Regulation 2017/1001 — Article 47(2) of Regulation 2017/1001 — Restriction of the application for registration before the Board of Appeal — Article 49(1) of Regulation 2017/1001)

1. EU trade mark — Registration procedure — Withdrawal, restriction and amendment of the trade mark application — Application to restrict the list of goods or services — Conditions (European Parliament and Council Regulation 2017/1001, Art. 49(1)) (see paras 26, 27)

2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 18(1)(a)) (see para. 36)

3. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Subject matter and scope of Article 18(1)(a) of Regulation 2017/1001 (European Parliament and Council Regulation 2017/1001, Art. 18(1)(a)) (see paras 37-40)

4. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Figurative mark XBOXER BARCELONA and figurative mark representing the letter (x) (European Parliament and Council Regulation 2017/1001, Art. 18(1)(a)) (see paras 48-50)

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 — Likelihood of confusion with the earlier mark — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 53, 54, 59, 82)

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 — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 58)

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 registered for identical or similar goods or services — Similarity of the marks concerned — Assessment only on the basis of the dominant element of a composite mark — Conditions (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 61, 62)

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 — Criteria for assessment — Composite mark — Determination of the dominant elements (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 67, 72)

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 registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment — Composite mark — Assessment of the distinctive character of an element of which a trade mark is composed (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 68, 87)

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 registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark XBOXER BARCELONA and figurative mark representing the letter (x) (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 74, 78, 79, 81, 88, 89, 91)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 12 July 2018 (Case R 2186/2017-5), relating to opposition proceedings between X-Technology Swiss and Boxer Barcelona.

Operative part

The Court:

1. Dismisses the action;