Judgment of the General Court (Fourth Chamber) of 7 October 2015 —

Panrico v OHIM — HDN Development (Krispy Kreme DOUGHNUTS)

(Case T‑534/13)

‛Community trade mark — Invalidity proceedings — Community figurative mark Krispy Kreme DOUGHNUTS — Earlier national and international word and figurative marks DONUT, DOGHNUTS, donuts and donuts cream — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) — Likelihood of profit derived unduly from the distinctive character or reputation — Risk of detriment — Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009)’

1. Community trade mark — Surrender, revocation and invalidity — Invalidity proceedings — Relationship between a final decision on an opposition matter and an application for invalidity — Res judicata — Scope (Council Regulation No 40/94, Arts 52(4), and 96(2)) (see para. 23)

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 — Criteria for assessment (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 29, 30, 41, 53)

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 — 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 40/94, Art. 8(1)(b)) (see para. 31)

4. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Figurative mark Krispy Kreme DOUGHNUTS — Word and figurative marks DONUT, DOGHNUTS, donuts and donuts cream (Council Regulation No 40/94, Arts 8(1)(b) and 52(1)(a)) (see paras 32-34, 40, 44, 45, 50, 62)

5. 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 40/94, Art. 8(1)(b)) (see paras 51, 52)

6. 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 — Weighting of the elements of similarity or difference between the signs — Taking into account of the intrinsic characteristics of the signs or the marketing conditions of the goods or services (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 55)

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 registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — High distinctiveness of the earlier mark — Irrelevant where no similarity between the marks concerned (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 60, 61)

8. 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 — Recognition of a certain degree of distinctiveness of a national mark (Council Regulation No 40/94, Arts 7(1)(b), 8(1)(b), and (2)(a)(ii); European Parliament and Council Directive 2008/95, Art. 3(1)(b); Council Directive 89/104, Art. 3(1)(b)) (see para. 65)

9. 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 (Council Regulation No 40/94, Art. 8(5)) (see para. 71)

10. 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 — Figurative mark Krispy Kreme DOUGHNUTS — Word and figurative marks DONUT, DOGHNUTS, donuts and donuts cream (Council Regulation No 40/94, Art. 8(5)) (see paras 74, 77, 78)

11. 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 — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 40/94, Art. 8(5)) (see para. 76)

12. Community trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (Council Regulation No 40/94, Art. 63(2)) (see para. 82)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 25 July 2013 (Case R 623/2011-4), relating to invalidity proceedings between Panrico SA and HDN Development Corp.

Operative part

The Court:

1. Dismisses the action;