Judgment of the General Court (Sixth Chamber) of 18 September 2014 — Herdade de S. Tiago II v OHIM — Polo/Lauren (V)

(Case T‑90/13)

‛Community trade mark — Opposition proceedings — Application for the Community figurative mark V — Earlier Community, national and Benelux figurative marks representing a polo player — Relative grounds for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Article 8(5) of Regulation No 207/2009’

1. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 23-26)

2. Community trade mark — Definition and acquisition of the Community 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 V and figurative marks representing a polo player (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 28-30, 43)

3. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 31)

4. Community trade mark — Definition and acquisition of the Community 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 — Coexistence of earlier marks on the market — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 45)

5. Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect (Council Regulation No 207/2009) (see para. 47)

6. Community trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria (Council Regulation No 207/2009) (see para. 48)

7. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(5)) (see paras 53, 56, 57)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 28 November 2012 (Case R 2240/2011-2), relating to opposition proceedings between The Polo/Lauren Company, LP and Herdade de S. Tiago II — Sociedade Agrícola, SA.

Operative part

The Court:

1. Dismisses the action;

2. Orders Herdade de S. Tiago II — Sociedade Agrícola, SA to pay the costs.

Judgment of the General Court (Sixth Chamber) of 18 September 2014 — Herdade de S. Tiago II v OHIM — Polo/Lauren (V)

(Case T‑90/13)

‛Community trade mark — Opposition proceedings — Application for the Community figurative mark V — Earlier Community, national and Benelux figurative marks representing a polo player — Relative grounds for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Article 8(5) of Regulation No 207/2009’

1. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 23-26)

2. Community trade mark — Definition and acquisition of the Community 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 V and figurative marks representing a polo player (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 28-30, 43)

3. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 31)

4. Community trade mark — Definition and acquisition of the Community 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 — Coexistence of earlier marks on the market — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 45)

5. Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect (Council Regulation No 207/2009) (see para. 47)

6. Community trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria (Council Regulation No 207/2009) (see para. 48)

7. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(5)) (see paras 53, 56, 57)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 28 November 2012 (Case R 2240/2011-2), relating to opposition proceedings between The Polo/Lauren Company, LP and Herdade de S. Tiago II — Sociedade Agrícola, SA.

Operative part

The Court:

1. Dismisses the action;