Judgment of the General Court (Sixth Chamber) of 7 July 2017 —

Axel Springer v EUIPO — Stiftung Warentest (TestBild)

(Case T‑359/16)

(EU trade mark — Opposition proceedings — Application for an EU word mark TestBild — Earlier national figurative marks test — Relative ground for refusal — Likelihood of confusion — Similarity of the goods and services — Similarity of the signs — Inherent distinctive character — Article 8(1)(b) of Regulation (EC) No 207/2009)

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 17, 18, 75, 76)

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 — Degree of attention of the relevant public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 19)

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 — Word mark TestBild and figurative marks test (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 20, 21, 37, 38, 49, 77-79, 81)

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 paras 22, 31)

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 of the marks concerned — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 39-41, 54-56, 60)

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 — Likelihood of confusion with the earlier mark — Weak distinctive character of the earlier mark — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 80)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 May 2016 (Case R 555/2015-4), relating to opposition proceedings between Stiftung Warentest and Axel Springer.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 May 2016 (Case R 555/2015-4), in so far as it found that there was a likelihood of confusion in respect of ‘printed matter, in particular test periodicals, consumer information, prospectuses, catalogues, books, newspapers and periodicals; instructional and teaching material (except apparatus)’, in Class 16 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended;

2. Dismisses the action as to the remainder;