Judgment of the General Court (Sixth Chamber) of 4 October 2017 – Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL)

(Case T-411/15)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark GAPPOL — Earlier EU word mark GAP — Cross-appeal — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Reputation — Unfair advantage taken of the distinctive character or reputation — Article 8(5) of Regulation No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009)

1. EU trade mark–Appeals procedure–Appeal to a Board of Appeal–Competence of the Boards of Appeal–New full examination of the merits (Council Regulation No 207/2009, Art. 64(1)) (see para 28)

2. EU trade mark–Appeals procedure–Appeal to a Board of Appeal–Challenge to the contested decision by the defendant in its observations (Commission Regulation No 216/96, Art. 8(3)) (see paras 31, 32)

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–Likelihood of confusion with the earlier mark–Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 39-41, 98)

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–Determination of the relevant public–Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para 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 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 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 registered for identical or similar goods or services–Similarity of the marks concerned–Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 50-52)

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–Likelihood of confusion with the earlier mark–Figurative mark GAPPOL and word mark GAP (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 96, 97, 102-105)

8. EU trade mark–Procedural provisions–Statement of reasons for decisions–Article 75, first sentence, 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 paras 115, 128)

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–Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para 142)

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–Conditions–Similarity of the marks concerned–Degree of similarity required (Council Regulation No 207/2009, Arts 8(1)(b) and 5) (see paras 148-150)

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–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 para 158)

12. 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–Word mark GAP (Council Regulation No 207/2009, Art. 8(5)) (see paras 169-72, 191-196, 199, 201, 202)

13. 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 (Council Regulation No 207/2009, Art. 8(5)) (see para 176)

14. 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–Condition–Link between the marks–Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 182-186)

15. EU trade mark–Appeals procedure–Action before the EU judicature–Power of the General Court to alter the contested decision–Limits (Council Regulation No 207/2009, Art. 65(3)) (see paras 204, 205)

Re:

APPEAL against the decision of the First Board of Appeal of EUIPO of 13 May 2015 (Case R 686/2013-1), relating to opposition proceedings between Gap (ITM) and PP Gappol Marzena Porczyńska.

Operative part

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 May 2015 (Case R 686/2013-1) in so far as the Board of Appeal rejected, pursuant to Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark, the application for registration in respect of goods falling within Class 20 and corresponding to the description ‘furniture’;

2. Dismisses the action as to the remainder;