Judgment of the General Court (Ninth Chamber) of 9 September 2020 –

Casual Dreams v EUIPO – López Fernández (Dayaday)

(Case T‑50/19)

(EU trade mark – Opposition proceedings – Application for EU figurative mark Dayaday – Earlier national figurative marks DAYADAY and dayaday – Relative grounds for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Likelihood of confusion – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Reputation – Unfair advantage taken of the distinctive character or the repute of the earlier trade mark)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Alteration of a decision of the Office – Assessment in the light of the powers conferred on the Board of Appeal (European Parliament and Council Regulation 2017/1001, Art. 72(3)) (see paras 26, 27)

2. Acts of the institutions – Temporal application – Procedural rules – Substantive rules – Distinction (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 – Reputation of the mark in the Member State or the EU –Meaning – Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 42, 43, 45, 46, 47)

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 – Assessment of the likelihood of confusion – Criteria (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 63-66)

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 – Figurative mark Dayaday and figurative marks DAYADAY and dayaday (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 68, 69, 72, 102, 115, 132, 138, 139, 142)

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 between the goods or services in question – Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 74)

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 between the goods or services in question – Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 84-86)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 16 November 2018 (Case R 2097/2018-5), relating to opposition proceedings between Casual Dreams and Mr López Fernández.

Operative part

The Court:

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 November 2018 (Case R 2097/2018-5) in so far as it concerns the following goods: – ‘Polarizing spectacles’, ‘Snow goggles’, ‘Cyclists’ glasses’, ‘Goggles for sports’, ‘Swim goggles’, in Class 9; – ‘Wash cloths’, ‘ Textile goods and substitutes for textile goods’, ‘Fabrics’, ‘Textiles, not included in other classes’, in Class 24;

2. Dismisses the action as to the remainder;