Judgment of the General Court (Fourth Chamber) of 12 March 2019 –

Xiaomi v EUIPO — Dudingen Develops (MI)

(Case T‑799/16)

(EU trade mark — Opposition proceedings — Application for EU figurative mark MI — Earlier EU figurative mark MI — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 18, 19)

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 — Marques figuratives MI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 20, 21, 28, 29, 32, 47, 52, 74, 85, 86)

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. 23)

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 between the goods or services in question — Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 48)

5. EU trade mark — Procedural provisions — Statement of reasons for decisions — First sentence of Article 75 of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see para. 78)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 5 September 2016 (Case R 337/2016-4), relating to opposition proceedings between Xiaomi and Dudingen Develops.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 September 2016 (Case R 337/2016-4) in so far as it dismissed the appeal against the decision of the Opposition Division to reject the opposition to registration of the figurative sign MI as a European Union trade mark for ‘electricity mains (materials for -) [cables]’, ‘electric cables’, ‘insulated electrical cables’, ‘connection cables’, ‘cable connectors’, ‘plug adaptors’, ‘electrical power adaptors’, ‘travel adaptors for electric plugs’, ‘adapters for connecting telephones to hearing aids’ and ‘electrical power extension cords’, in Class 9, and ‘rucksacks’, ‘small rucksacks’ and ‘bags for climbers’, in Class 18;

2. Dismisses the action as to the remainder;

3. Orders Xiaomi Inc. to bear two thirds of its costs and to pay two thirds of the costs incurred by EUIPO;